R.    H.    F.    V  ARIEL 

ATTORNEY  AT  LAW 

LM  MiaKLM.  ML. 


THE  LIBRARY 

OF 

THE  UNIVERSITY 
OF  CALIFORNIA 

LOS  ANGELES 

SCHOOL  OF  LAW 


TEXT-BOOK 


OF 


THE  PATENT  LAWS 


OF 


THE  UNITED  STATES  OF  AMERICA. 


BY 

ALBERT    H.    WALKER, 

OF  THE  HARTFORD  BAR. 


SECOND    EDITION.     . 


NEW  YORK  : 

K.  STROUSE  &  CO.,   LAW  PUBLISHERS, 
96  NASSAU  STREET. 
1889. 


COPYRIGHT,  1883  AND  1889, 

BY 

ALBERT  H.  WALKER. 


PREFACE  TO  THE  SECOND  EDITION. 


THE  patent  laws  of  the  United  States,  as  those  laws  ex- 
ist at  this  beginning  of  the  second  century  of  the  national 
government,  are  stated  and  explained  in  this  edition  of  this 
book.  The  differences  between  it  and  the  first  edition,  con- 
sist in  omitting  eleven  whole  sections  which  have  become 
obsolete  since  1883,  together  with  parts  of  many  other  sec- 
tions for  the  same  reason  ;  and  in  inserting  three  new  sec- 
tions, and  many  new  points  in  many  other  sections,  which 
have  been  enacted  in  the  statutes  or  developed  in  the  de- 
cisions since  that  year ;  and  in  so  changing  or  qualifying 
the  statements  of  law  in  many  other  places  as  to  make 
them  conform  to  those  relevant  and  often  radical  decisions 
of  the  courts  which  have  been  rendered  since  the  first 
edition  of  the  book  was  published.  The  work  of  making 
these  changes  began  as  soon  after  the  publication  of  the 
first  edition  as  new  decisions  were  published,  and  has  con- 
tinued from  that  time  to  this,  and  has  involved  my  careful 
study  and  analysis  of  the  more  than  six  hundred  new 
decisions  which  are  incorporated  with  the  more  than  twelve 
hundred  old  ones  in  the  table  of  cited  cases.  The  generous 
judgment  which  has  been  passed  upon  the  first  edition  of 
the  work,  has  been  made  known  through  numerous  cita- 
tions of  the  book  in  the  decisions  of  the  courts,  and  through 
numerous  letters  received  by  me  from  my  professional 


G67417 


IV  PREFACE   TO   THE    SECOND    EDITION. 

brethren.  Sincere  thanks  for  the  exceeding  generosity  of 
that  judgment  are  now  returned;  and  I  am  thereby  encour- 
aged to  propose  a  third  edition  of  the  book  in  1895,  and  a 
fourth  edition  at  the  beginning  of  the  twentieth  century. 

A.  H.  W. 

HARTFORD,  CONNECTICUT, 
April  30,  1889. 


PREFACE  TO  THE  FIRST  EDITION, 


THE  Constitution  and  the  statutes  of  the  United  States, 
together  with  twelve  hundred  and  forty-six  Federal  and 
State  judicial  decisions,  are  the  principal  sources  from 
which  the  materials  for  this  text-book  were  drawn.  The 
most  extensive  treatise  heretofore  published  on  the  same 
subject,  was  published  in  1873  ;  but  it  cited  only  two  hun- 
dred and  eighty  American  cases,  together  with  one  hundred 
and  sixty-one  English  adjudications.  The  inadequacy,  to 
the  needs  of  the  profession,  of  a  treatise  so  limited  in  scope, 
was  clearly  impressed  upon  me  when  I  entered,  in  1877,' 
upon  a  somewhat  extended  practice  in  patent  litigation. 
During-  the  next  four  years,  I  was  called  upon  to  argue 
several  patent  cases  in  the  Supreme  Court,  and  many  others 
in  many  of  the  Circuit  Courts  of  the  United  States ;  and  in 
preparing  those  arguments,  I  was  forced  to  make  many 
laborious  researches,  from  w,hich  a  complete  text-book 
would  have  largely  relieved  me.  Under  these  circum- 
stances, I  resolved,  early  in  1881,  to  undertake  the  produc- 
tion of  a  treatise  so  much  needed  by  the  profession.  I  be- 
gan writing  on  the  first  day  of  May  of  that  year,  and  soon 
became  so  much  interested  in  the  work,  that  I  largely  sus- 
pended my  active  practice  of  the  law,  in  order  to  give  the 
book  the  freshest  of  my  efforts,  and  thus  the  greatest  de- 
gree of  merit  consistent  with  my  abilities.  The  resulting 


VI  PREFACE   TO   THE    FIRST   EDITION. 

treatise  covers  the  entire  field  of  the  patent  laws  of  the 
United  States,  as  those  laws  were  enacted  in  the  statutes 
and  developed  in  the  decisions,  from  the  foundation  of  the 
national  government  in  1789,  down  to  the  first  day  of 
September,  1883.  How  accurately  and  well  it  covers  that 
field,  is  a  question  which  belongs  to  the  bar  and  to  the 
bench ;  and  to  the  generous  judgment  of  the  bench  and 
of  the  bar,  I  commit  the  result  of  my  long  and  interesting 
labor. 

A.  H.  W. 

HARTFORD,  CONNECTICUT, 
September  26,  1883. 


TABLE  OF  CONTENTS. 


CHAPTEE   I. 

THE  SUBJECTS  OF  PATENTS Pages  1-19 


1.  Constitutional  and  statutory  foun- 

dation of  the  patent  laws. 

2.  Constitutional      and      statutory 

meaning  of  the  word  "discov- 
ery." 

3.  Patent  law  meaning  of  the  word 

"  art." 

4.  Patent  law  meaning  of  the  word 

"  process,"  as  illustrated  in  the 
case  of  Corning  t.  Burden. 

5.  Patent  law  meaning  of  the  word 

"process,"  as  illustrated  by 
the  case  of  MacKay  v.  Jack- 
man,  and  by  other  Circuit  Court 
cases. 

6.  Patent    law    meaning     of     the 

word  "  process,"  precisely  de- 
fined. 

7.  Difference  between  a  patent  for  a 

"  process,"  and  a  patent  for  a 
"  principle,"  inquired  into. 

8.  Illustrated  by  the  case  of  McClurg 

v.  Kingsland. 

9.  Illustrated  by  the  case  of  O'Reil- 

ly v.  Morse. 


10.  Illustrated  by  the  case  of  Mowry 
v.  Whitney. 

11.  Illustrated  by  the  case  of  Tilgh- 
man  ».  Proctor. 

lla.  Illustrated  by  the  Telephone 
Cases. 

12.  Illustrated   by  the    five    cases 
when  compared. 

13.  Illustrated    by   the  five    cases 
when  contrasted. 

14.  Deduced  from  the  five  cases  as 
compared  and  contrasted. 

15.  Illustrated  by  the  eighth  claim 
of  Morse. 

16.  Machines,  and  improvements  of 
machines. 

17.  Manufactures. 

18.  Compositions  of  matter. 

19.  Distinction  between  machines, 
manufactures,     and     composi- 
tions of  matter. 

20.  Designs. 

21.  On  whose  invention  designs  are 
patentable. 

22.  Utility  and  beauty  of  designs. 


CHAPTER  II. 

INVENTION Pages  20-43 

23.  Invention  necessary  to  patent-  ing  the  presence  or  absence  of 
ability.  invention. 

24.  Many  negative  rules,   but    no  25.  Mere  mechanical  skill  is  not  in- 
affirmative  rule,  for  determiu-  vention. 


Vlll 


CONTENTS. 


26.  Circumstances  indicating  differ- 
ence between  invention  and  me- 
chanical skill. 

27.  Excellence  of  workmanship  is 
not  invention. 

28.  Substitution  of  materials  is  not 
invention. 

29.  Exception  to  the  last  rule. 

30.  Enlargement  is  not  invention. 

31.  Change  of  degree  is  not  inven- 
tion. 

32.  Aggregation  is  not  invention. 

33.  Simultaneousness  of  action  is  not 
necessary  to  invention. 

34.  Duplication  is  not  invention. 

35.  Omission  is  not    generally  in- 
vention. 

36.  Substitution  of    equivalents   is 
not  invention. 

37.  New  combination,  without  new 
mode  of  operation,  is  not  inven- 
tion. 

38.  Using  old  thing  for  new  purpose 
is  not  invention. 


39.  Cases  to  which  the  last  rule  does 
not  apply. 

40.  Doubts  relevant    to  invention, 
when   otherwise  insoluble,  are 
solved  by  ascertaining  compar- 
ative utility. 

41.  Form. 

42.  Questions  of  invention  are  ques- 
tions of  fact. 

43.  Questions  of    invention    some- 
times investigated  in  the  light 
of  the  state  of  the  art. 

44.  Joint  and  sole  inventions. 

45.  How  made. 

46.  How  distinguished. 

47.  Suggestions  to  an  inventor. 

48.  Information  sought  by  an   in- 
ventor. 

49.  Mechanical  skill  not  necessary 
to  invention. 

50.  Sole  patent  to  one  joint  inventor 
is  void. 

51.  Joint  patent  to  sole  inventor  and 
another  is  void. 


CHAPTEK  III. 

NOVELTY Pages  44-61 


52.  Novelty    necessary    to    patent- 
ability. 

53.  Novelty  defined. 

54.  Not  negatived  by  knowledge  or 
use  in  a  foreign  country. 

55.  Not  negatived  by  private  patent 
granted  in  a  foreign  country. 

56.  Prior  printed  publications. 

57.  Fullness  of  prior   patents   and 
printed  publications. 

58.  Novelty  not  negatived   by  any 
abandoned  application. 

59.  Qualification  of  the  last  rule. 

60.  Successful  prior  applications. 

61.  Novelty  not  negatived  by  any 
unpublished  drawing,  or  prior 
model. 


62.  Novelty  not  negatived  by  any- 
thing substantially  different. 

63.  Abandoned  experiments. 

64.  Novelty  in  cases  of  designs. 

65.  Novelty  not  negatived  by  any- 
thing   apparently     similar    or 
chemically  identical,  but  prac- 
tically useless,  [tiquity  of  parts. 

66.  Novelty  not  negatived  by  an- 

67.  Novelty  not  negatived  by  prior 
accidental  and  not  understood 
production. 

68.  Novelty  not  negatived  by  any- 
thing neither  designed,  nor  ap- 
parently adapted,   nor  actually 
used  for  the  same  purpose  as  the 
invention. 


CONTENTS. 


IX 


69.  Comparative  dates. 

70.  Dates  of  patented  inventions. 

71.  Novelty  is  negatived  by  one  in- 
stance of  prior  knowledge  and 
use  in  this  country. 

72.  Novelty  is  negatived  by  prior 
making  without  using. 

73.  Inventor's  lack  of  knowledge  of 


anticipating   matter   is    imma- 
terial. 

74.  Old  thing    derived    from  new 
source. 

75.  Questions  of  novelty  are  ques- 
tions of  fact. 

76.  Burden    of   proof    relevant    to 
novelty.  ^ 


CHAPTER  IV. 


UTILITY. 


77.  Utility  necessary  to  patentabil- 
ity. 

78.  Utility  is  negatived  by  lack  of 
function. 

79.  Perfection  not  necessary  to  util- 
ity. 

80.  Beauty  has  utility. 

81.  Utility  is  negatived  where  func- 
tion is  evil. 


Pages  62-67 

82.  Functions     which      sometimes 
work  evil,  and  sometimes  work 
good. 

83.  Functions  thought  by  some  to 
be  good,  and  by  others  to  be 
bad. 

84.  Good  functions  in  wrong  places. 

85.  Doubts  relevant  to  utility  to  be 
solved  against  infringers. 


CHAPTER  V. 

ABANDONMENT Pages  68-82- 


86.  The  several  sorts  of  abandon- 
ment. 

87.  Abandonment  of  inventions. 

88.  Actual  abandonment  of  inven- 
tions. 

89.  Actual  abandonment  by  express 
declaration. 

90.  Actual  abandonment  by  formal 
disclaimer. 

91.  Actual  abandonment  resulting 
from  laches  before  application. 

92.  Actual  abandonment  resulting 
from  laches   after   application 
and  before  issue  of  letters  pat- 
ent. 

93.  Constructive  abandonment  be- 
fore application. 

94.  "Public  use,"  defined  and  de- 
lineated. 

95.  Experimental  use. 


96.  '  On  sale, "  delineated  and  de 
fined. 

97.  Sale  of  inchoate  right  to  a  pat- 
ent. 

98.  Degree  of  identity  necessarily 
involved  between  the  thing  con- 
structively abandoned  and  the 
thing  patented. 

99.  Making,  works  no  constructive 
abandonment. 

100.  Public    knowledge  works  no 
constructive  abandonment. 

101.  Public  use  or  sale  in  a  foreign 
country. 

103.  Constructive  abandonment  af- 
ter application,  and  before  issue 
of  letters  patent. 

104.  Rules  of  constructive  abandon- 
ment are  inflexible. 

105.  Surrender  of  letters  patent. 


CONTENTS. 


106.  Abandonment  of  invention  af- 
ter letters  patent,  unknown  to 
the  law. 

107.  Acquiescence  in  unlicensed  use 


of  patented  invention. 
108.  Questions  of  abandonment  are 
questions  of  fact. 


CHAPTEE  VI. 

APPLICATIONS Pages  83-111 


109.  Constituents    of    applications 
for  patents. 

110.  The  petition. 

111.  Constituents  of  specifications. 

112.  The  preamble. 

113.  The  general  statement  of  the 
invention. 

114.  The  description  of  the  draw- 
ings. 

115.  The  detailed  description  of  the 
invention. 

116.  The  claim  or  claims. 

117.  Claims  in  machine  patents. 

118.  Claims  in  patents  for  manufac- 
tures. 

119.  Claims  in  patents  for  composi- 
tions of  matter. 

120.  Claims  in  process  patents. 
120a.  Claims  in  design  patents. 

121.  The  signatures. 

122.  The  form  of  the  oath. 

123.  The  constituents  of  the  oath. 

124.  Affirmations. 

125.  The  Patent-Office  fees. 

126.  Drawings. 

127.  Models. 

128.  Specimens  of  compositions  of 
matter. 

129.  Dates  of  applications. 

130.  The  examination  by  the  Patent 
Office. 


131.  Notification  of  rejection. 

132.  Appeals. 

133.  Appeals  to  the  Supreme  Court 
of  the  District  of  Columbia. 

134.  Bills  in  equity  to  compel  the 
Commissioner  to  grant  patents. 

135.  Amendment  of  applications. 

136.  The  foundation  of  the  right  of 
amendment. 

137.  When  an  applicant  may  amend. 

138.  How  an  applicant  may  amend. 

139.  When  an  applicant  must  amend. 

140.  Interferences. 

141.  Number  of  interferences. 

142.  Decision  on  interference  is  not 
conclusive. 

143.  Caveats. 

144.  No  appeal  from  the  Commis- 
sioner in  interference  cases;  but 
relief  by  bill  in  equity. 

145.  Abandonment  of  applications. 

146.  Constructive  abandonment  of 
applications. 

147.  Constructive  abandonment  of 
application  working    construc- 
tive   abandonment    of    inven- 
tion. 

148.  Effect  of  Commissioner's   de- 
cision on  questions  relevant  to 
applications. 


CHAPTEE  VII. 

LETTERS  PATENT Pages  112-147 


149.  No  exclusive  right  to  inven- 
tions, at  common  law. 

150.  Constitutional  exclusive  right 
to    inventions    in    the  United 
States. 


151.  Patents  are  property. 

152.  Dignity  of    property  in    pat- 
ents. 

153.  Patents  are  not  odious  monopo- 
lies. 


CONTEXTS. 


154.  Patent  rights  are  absolute,  not 
qualified. 

155.  Patent  rights  are  beyond  Stale 
interference. 

156.  Patent  rights  are  not  subject 
to  common  law  executions,  but 
may  be  subjected  to  creditors' 
bills  in  equity. 

157.  Patent  rights  are  as  exclusive 
of  the  government,  as  they  are 
of  any  citizen. 

158.  Patents  do  not  cover  specimens 
purchased  of  the  inventor,  or 
made     with      his    knowledge 
and  consent,  before  application 
therefor. 

159.  The  foregoing  rule  has  no  ap- 
plication to  patents  for  process- 
es. 

160.  Territorial    scope    of    United 
States  patents. 

161.  Operation    of    United    States 
patents  on  the  decks  of  ships. 

162.  Duration  of  patents. 

163.  Duration  of  United  States  pat- 
ents for  inventions  first  patent- 
ed in  a  foreign  country,  accord- 
ing to  the  statute  of  1870. 

164.  Duration  of  United  States  pat- 
ents for  inventions  first  patent- 
ed in  a  foreign  country,  accord- 
ing to  the  statute  of  1839. 

165.  Duration  of  United  States  pat- 
ents for  inventions  first  patent- 
ed in  a  foreign  country  accord- 
ing to  the  statute  of  1861. 

170.  Beginning    of    the    terms  of 
United  States  patents. 

171.  To  whom    letters   patent  are 
granted  by  the  government. 


172.  Letters  patent  as  documents. 

173.  The  specification. 

174.  The  description. 

175.  The  description. 

176.  The  claim  or  claims. 

177.  The  claim  or  claims. 

178.  Particularity    in    descriptions 
and  claims,  is  a  condition  pre- 
cedent to  validity. 

179.  Questions  of  sufficiency  of  par- 
ticularity of    descriptions  and 
claims,  are  questions  of  fact,  and 
not  of  law. 

180.  Plurality  of    inventions    in  a 
single  letters  patent. 

181.  Construction  of  letters  patent. 

182.  Claims  to  be  construed  hi  the 
light  of  descriptions. 

183.  Construction      of     functional 
claims. 

184.  Claims  construed  in  the  light 
of  the  state  of  the  art 

185.  Proper  liberality  of  construc- 
tion. 

186.  Proper  strictness  of  construc- 
tion. 

187.  Construction    in  the  light  of 
contemporaneous     understand- 
ing of  the  inventor? 

188.  Construction    in  the  light  of 
contemporaneous  statutes. 

189.  Questions  of  construction  are 
questions  of  law,  and  not  of  fact. 

190.  Letters  patent  presumed  to  be 
for  same  invention  as  the  ap- 
plication therefor. 

191.  Letters  patent  are  constructive 
notice  of  their  contents  to  every 
person. 


CHAPTER  VIH. 

DISCLAIMERS Pages  148-160 


192.  Statutory  authorization  of  dis- 
claimers. 

193.  Statutory    prescriptions,   rele- 
vant to  disclaimers. 


194.  Errors  which  justify  disclaim- 
ers. 

195.  Mistakes  of  fact,  relevant   to 
novelty. 


Xll 


CONTENTS. 


196.  Mistakes  of  law,  relevant  to  in- 
vention. 

197.  Claims  void  for  want  of  utility. 

198.  Combination  claims. 

199.  Compound  claims. 

200.  Immaterial  claims. 

201.  Reissue  claims. 

202.  Fraudulent  or  deceptive  inten- 
tion. 

203.  Effect  of  unreasonable  delay  to 
file  a  disclaimer. 


204.  Beginning  of  unreasonable  de- 
lay to  file  a  disclaimer. 

205.  Costs,  where  a  necessary  dis- 
claimer has  not  been  filed. 

206.  Extent  of  disclaimant's  interest. 

207.  Construction  of  letters  patent 
after  a  disclaimer. 

208.  Disclaimers  filed  pending  liti- 
gation. 

209.  Disclaimers  demanded  by  ju- 
dicial decisions. 


CHAPTEE   IX. 


REISSUES 

210.  Beginning  of  the  history  of  re- 
issues. 

211.  First  statute  providing  for  re- 
issues. 1832. 

212.  Reissues  under  the  Patent  Act 
of  1836. 

213.  Amendments  made  in  the  re- 
issue law,  by  the  Patent  Act  of 
1837. 

214.  Reissues  under  the  Patent  Act 
of  1870. 

215.  Reissues    under    the    Revised 
Statutes. 

216.  Subjects  of  reissues. 

217.  The    words     "  specification," 
"  defective, "  and  "  insufficient" 
defined. 

218.  Faults  which  justify  reissues. 

219.  Faults  in  claims  which  justify 
reissues. 

220.  Inadvertence,    accident,     and 
mistake. 

221.  Question  of  the  conclusiveness 
of  the  Commissioner's  decision 
relevant  to  existence  of  reissua- 
ble  faults,  and  relevant  to  the 
existence  of  inadvertence,  acci- 
dent, or  mistake. 

222.  The  question  of  the  last  sec- 
tion   discussed   and   supported 
in  the  affirmative. 

323.  The  same  question  discussed 
and  supported  in  the  negative. 


224. 
225. 
226. 

227. 

228. 
229. 


230. 
231. 

232. 


233 
239, 

240. 
242. 


243. 
244. 
245. 


Pages  161-192 

Great  importance  of  the  ques- 
tion. 

The    text-writer's  opinion    of 

the  true  answer. 

The  doctrine  of  the  case  of 
Miller  v.  Brass  Co. 

The  length  of  the  delay  con- 
templated by  the  doctrine  of 
Miller  v.  Brass  Co. 

Effect  of  delay  in  other  cases 
than  those  of  broadened  claims. 

The  statute  relevant  to  two 
years'  prior  use  or  sale,  has  no 
application  to  reissues  as  such. 

Surrender  of  patent. 

Effect  of  surrender  with,  and 
also  without,  reissue. 

Reissues  of  reissued  patents  and 
of  extended  patents,  but  not 
of  expired  patents,  are  proper. 

Same  invention. 

Where  there  is  neither  model 
nor  drawing. 

New  matter. 

Reissues  must  be  for  same  in- 
vention as  prior  reissues,  and 
also  for  same  invention  as  orig- 
inals. 

Legal  presumption  of  same- 
ness of  invention. 

Omission,  as  it  affects  same- 
ness of  invention. 

Reissues  for  sub-combinations. 


CONTEXTS. 


Xlll 


246.  Reissues  for  single  devices. 

247.  Reissues  as  affected  by  substi- 
tution of  equivalents. 

248.  Reissues  entitled   to  a  liberal 
construction. 

249.  Reissued  patents  may  be  valid 
as  to  some  claims  while  void 
as  to  others. 


250.  Executors,  administrators,  and 
assigns  may  procure  reissues. 

251.  One  of  several  executors  may 
procure  a  reissue. 

252.  Rights  of  assignees  in  reissues. 

253.  The  rights  of  grantees  in  reis- 
sues. 

254.  The  legal  effect   of   reissued 
patents. 


CHAPTEK  X. 

EXTENSIONS Pages  193-204 


255.  Constitutional    foundation    of 
extensions. 

256.  Congressional  extensions. 

257.  Mode  of  Congressional  exten- 
sion. 

258.  Effect  of  Congressional  exten- 
sions. 

259.  Patent  Office  extensions. 

260.  Statutory  foundation  of  Patent 
Office  extensions. 

261.  Who  might  apply  for  Patent 
Office  extensions. 

262.  Points  of  time  whereon  Pat- 
ent Office  extensions  were  grant- 
able. 

263.  Patent  Office  extensions  might 
be  granted  to  an  inventor-pat- 
entee, even  if  he    had    parted 
with  all  interest  in  the  first  term 
of  his  patent. 


264.  Patent  Office  extensions  gran  ta- 
ble only  where  inventors  would 
possess,  or  at  least  participate  in, 
the  benefit  thereof. 

265.  Patent    Office  extension,  how 
effectuated. 

266.  Force  of  the  Commissioner's 
decision  in  extension  cases. 

267.  Facts  which  justify  extensions. 

268.  Proceedings  preliminary  to  ex- 
tensions. 

269.  Remedy  for  fraud  in  procuring 
or  in  granting  extensions. 

270.  "The  benefit  of  the  extension  of 
a  patent  shall  extend  to  the  as- 
signees and  grantees  of  the  right 
to  use  the  thing  patented,  to  the 
extent  of  their  interest  therein." 

271.  Adjudged  meaning  of  the  stat- 
ute quoted  in  the  last  section. 


CHAPTER  XL 


TITLE 

272.  The  nature  of  titles,  and  the 
methods  of  their  acquisition. 

273.  Title  by  occupancy. 

274.  Title  by  assignment. 

275.  Characteristics,  authentication, 
and  effect  of  assignments. 

276.  Dormant  assignments. 

277.  Assignments  of  rights  of  action 
for  past  infringements. 


Pages  205-228 

278.  Construction  of  assignments. 

279.  Reformation  of  assignments. 

280.  Assignments  of  extensions. 

281.  Recording  and  notice. 

282.  Warranty  of  title. 

283.  No  implied  warrantj'of  validity. 

284.  Express  warranties  of  validity. 

285.  Equitable  titles,  how  created. 

286.  Equitable  titles,  how  treated. 


XIV 


CONTENTS. 


287.  Title  by  grant. 

288.  Extra-territorial  rights  convey- 
ed by  grants. 

289.  Title  by  creditor's  bill. 

290.  Title  by  bankruptcy. 

291.  Title  by  death. 


292.  Tenancy  in  common.     Joint- 
tenancy. 

293.  Joint-tenancy,  how  severed. 

294.  Rights  of  tenants  in  common 
as  against  each  other. 

295.  Partition. 


CHAPTER  xn. 

LICENSES : Pages  229-242 


296.  Licenses  defined  and  described. 

297.  Express  licenses  to  make,  with 
implied  leave  to  use,  or  implied 
leave  to  sell  the  things  made. 

298.  Express  licenses   to  use,  with 
implied  leave  to  make  for  use. 

299.  Express  licenses  to  sell,  with 
implied  leave  to  the  vendees  to 
use  and  to  sell  the  things  they 
purchase. 

300.  Licenses  to  make  and  use,  with- 
out implied  leave  to  sell. 

301.  Licenses  to  make  and  sell,  or 
to  use  and  sell,  with  implied 
leave  to  the  vendees  to  use  and 
to  sell  the  articles  they  buy. 

802.  Express  licenses  so  restricted 
as  not  to  convey  implied  rights. 


303.  Written  and  oral  licenses. 

304.  Recording  and  notice. 

305.  Licenses  given  by  one  of  sev- 
eral owners  in  common,  and  li- 
censes given  to  one  of  several 
joint  users. 

306.  Construction  of  licenses. 

307.  Warranty  and  eviction. 

308.  Clauses  of  forfeiture: 

309.  Effects  of  forfeiture. 

310.  Assignability  of  licenses. 

311.  Purely  implied  licenses. 

312.  Implied  licenses  from  conduct, 
and  first  by  acquiescence. 

313.  Implied  licenses  from  conduct, 
by  estoppel. 

314.  Implied  licenses  from  actual  re- 
covery of  damages  or  profits. 


CHAPTER  XIII. 

INTERFERING  PATENTS Pages  243-248 


815.  Causes  and   characteristics  of 
interfering  patents. 

316.  Actions  in  equity  between  in- 
terfering patents. 

317.  The  proper  issues  in  such  ac- 
tions. 

318.  The  force  of  the  decision  of 


the  Commissioner  of  Patents  on 
a  prior  interference  in  the  Pat- 
ent Office. 

319.  Injunctions  in  interference  ac- 
tions. 

320.  The  proper  decrees  in  such  ac- 
tions. 


CHAPTER  XIV. 

REPEAL  OF  PATENTS Pages  249-250 

321.  Patents  obtained  by  fraud,  or 


granted  by  mistake. 
322.  Jurisdiction  of  equity  to  repeal 


patents  so  obtained  or  so  grant- 
ed. 
323.  Practice  in  such  cases. 


CONTENTS. 


CHAPTER  XV. 


QUI  TAM  ACTIONS 

324.  Qui  tarn  actions,  defined  and 
described  as  they  exist  in  the 
patent  laws. 

325.  The    wrongs    which    are    the 
foundations  of  such  actions. 

326.  The  first  two  of  those  three 
classes  of  wrongs. 

327.  The  third  of  those  three  classes 
of  wrongs. 

328.  Wrongs  of  either  class  are  com- 
pleted when  the  articles  are  ille- 
gally marked,  without  any  sub- 
sequent using  or  selling. 


Pages  251-257 

329.  The  amount  of  the  recoverable 
penalty. 

330.  The  parties  in  qui  tarn  patent 
cases. 

331.  The  forum  for  qui  tarn  patent 
actions. 

332.  The  form  of  the  suit,  and  the 
requisites  of  a  declaration,  in 
such  an  action. 

333.  Injunctions  to  restrain  the  com- 
mission of  wrongs  of  either  of 
the  first  two  classes. 

334.  Appeals  in  qui  tarn  patent  cases. 


CHAPTER  XVI. 
INFRINGEMENT Pages  258-293 


335.  Infringement  of    process  pat- 
ents, illustrated  by  the  case  of 
Tilghman  v.  Proctor. 

336.  Illustrated  by  the  case  of  Mow- 
ry  v.  Whitney. 

337.  Illustrated  by  the  case  of  Coch- 
rane  v.  Deener. 

338.  Equivalents  in  processes. 

339.  Infringement    of    patents    for 
machines  or  manufactures. 

340.  Comparative  results. 

341.  The  test  of  comparative  modes 
of  operation. 

342.  Comparative   modes  of  opera- 
tion as  illustrated  by  the  case  of 
the  Cawood  patent. 

843.  As  illustrated  by  the  Driven- 
Well  cases. 

844.  As  illustrated  by  Blanchard's 
patent    for    turning    irregular 
forms. 

845.  As    illustrated    by    Hayden's 
Brass- Kettle  machine. 

346.  As  illustrated   by  the  case  of 
Burr  v.  Duryee. 


346a.  As  illustrated  by  The  Electric 
Signal  case. 

347.  Addition. 

348.  Transposition  of  parts. 

349.  Omission. 

350.  Substitution. 

351.  Equivalents  inquired  into. 

352.  The  test  of  sameness  of  func- 
tion. 

353.  The  test  of  substantial  same- 
ness of  way  of  performance. 

354.  Question  of  thenecessilyof  age 
in  equivalents,  stated  and  con- 
sidered   in    the    light    of    the 
views  of  Justice  CLIFFOKD. 

355.  The  same  question  considered 
in  the  light  of  thecasesof  Mason 
v.  Graham  and  Clough  v.  Mfg. 
Co. 

356.  The  same  question  considered 
in  the  light  of  sundry  Circuit 
Court  cases. 

357.  The  same  question  considered 
in  the  light  of  the  case  of  Potter 
v.  Stewart. 


XVI 


CONTENTS. 


358.  Review  of  the  question  consid- 
ered in  the  last  four  sections. 

359.  Primary  and  secondary  inven- 
tions in  respect  of  the  doctrine 
of  equivalents. 

360.  Primary  inventions  considered 
in  this  respect. 

361.  Secondary  inventions    consid- 
ered in  the  same  respect. 

362.  Review  of  the  matters  consid- 
ered in  the  last  three  sections. 

363.  Changes  of  form  considered  in 
respect  of  questions  of  infringe- 
ment. 

364.  Subject  of  the  last  section  illus- 
trated by  the  case  of  Strobridge 
v.  Lindsay. 

365.  Illustrated  by  the  case  of  Ives 
v.  Hamilton. 

366.  Illustrated  by  the  case  of  Morey 
1).  Lockwood. 

367.  Illustrated  by  the  case  of  the 
American  Diamond  Rock  Bor- 


ing Co.  v.  The  Sullivan  Machine 
Co. 

368.  Illustrated  by  the  case  of  Eliza- 
beth 0.  Pavement  Co. 

369.  Infringement    of    patents    for 
compositions  of  matter. 

370.  Substitution  of  ingredients. 

371.  Substitution  of   ingredients  as 
illustrated  by  the  Giant-Powder 
cases. 

372.  Disclaimers  of  particular  equiv- 
alents. 

373.  Changes  of  the  proportions  in 
compositions  of  matter. 

374.  The  various  classes  of  composi- 
tions of  matter. 

375.  Infringement  of  patents  for  de- 
signs. 

376.  Comparative  utility  not  a  cri- 
terion of  infringement. 

377.  Knowledge  of  a  patent  not  a 
•   necessary    element    in   its   in- 
fringement. 


CHAPTER  XVII. 
COURTS  PARTIES  AND  CAUSES Pages  293-325 


378.  Introductory  explanation. 

379.  Jurisdiction  of  United    States 
courts  of  first  resort  in  patent 
cases. 

380.  Question  of  the  jurisdiction  of 
State   courts    in    patent    cases 
stated. 

381.  Supported    in    the    affirmative 
from  ALEXANDER  HAMILTON. 

382.  Supported  in  the  negative  from 
Justice  STORY. 

383.  Supported    in    the  affirmative 
from  Justice  WASHINGTON. 

384.  Supported  in  the  negative  from 
Chancellor  KENT. 

385.  Supported  in  the  negative  from 
Justice  FIELD. 

386.  Considered  in  the  light  of  all 
the  foregoing  opinions. 


387.  Supported  in  the  negative  by 
the  text-writer. 

388.  Jurisdiction    of    State    courts 
over  controversies  growing  out 
of  contracts  relevant  to  patents. 

389.  Jurisdiction  of  in  dividual  Unit- 
ed  States  courts  of  first  resort 
in  patent  cases. 

390.  Qualifications  of  the  rule  of  the 
last  section. 

391.  Jurisdiction  of  the  Court    of 
Claims. 

392.  Question  of  the  jurisdiction  of 
the  Court  of  Claims  over  causes 
of  action  based  on  unauthorized 
making,  using,  or  selling  by  the 
United    States  Government  of 
specimens  of  a  patented  process 
or  thing. 


CONTENTS. 


XVU 


393.  Question  of  the  jurisdiction  of 
United    States    Circuit    Courts 
over    actions,   brought    against 
agents   of    the    United    States 
Government, and  based  on  unau- 
thorized making,  using,  or  sell- 
ing, by  those  agents,  on  behalf 
of    the  government,   of  speci- 
mens of  a  patented  process  or 
thing. 

394.  Who  may  be  a  plaintiff  or  com- 
plainant in  a  patent  action. 

395.  Who  may  be  plaintiff  or  com- 
plainant in  an  action  based  on 
an  assigned  accrued  right  of  ac- 
tion for  infringement. 

396.  Executors    and  administrators 
as  plaintiffs  and  complainants. 

397.  Assignees  of  executors  or  ad- 
ministrators   as    plaintiffs    and 
complainants. 

398.  Attorneys    in   fact    cannot  be 
nominal  plaintiffs  or  complain- 
ants. 

399.  Owners    in  common  as  joint 
plaintiffs  or  complainants. 

400.  Licensees  cannot  be    nominal 
plaintiffs,  nor  sole  nominal  com- 
plainants. 

401.  Who  maybe  made  a  defendant 
in  a  patent  action. 


402.  Minors,   married  women,  and 
lunatics  as  defendants. 

403.  Agents,  salesmen,  and  employ- 
ees as  defendants. 

404.  Employers  as  defendants. 

405.  Persons  as  defendants  who  have 
caused  others  to  infringe. 

406.  Joint  inf ringers  as  defendants. 

407.  What  facts  constitute  joint  in- 
fringement. 

408.  Partners  as  defendants. 

409.  Private  corporations  as  defend- 
ants. 

410.  Officers,  directors,  and   stock- 
holders of  corporations  as  de- 
fendants. 

411.  The  same  subject  continued. 

412.  Stockholders  of  corporations. 

413.  Officers  of  corporations. 

414.  Directors  of  corporations. 

415.  Statutory  liability  of  officers, 
directors,   and  stockholders  of 
corporations. 

416.  Consolidated  corporations  as  de- 
fendants in  actions  based  on  in- 
fringements committed  by  their 
constituent  corporations. 

417.  Causes  of  action   based  on  a 
plurality  of  patents,  or  on  both 
terms  of  an  extended  patent. 


CHAPTER   XVIII. 


ACTIONS  AT  LAW. 


418.  Actions  of  trespass  on  the  case. 

419.  The  question  of  the  propriety 
of  actions  of  assumpsit  for  in- 
fringements of  patents,  consid- 
ered in  the  light  of  precedents. 

420.  Considered  in  the  light  of  ex- 
pediency. 

421.  Forms    of    civil    actions    pre- 
scribed by  State  codes  and  stat- 
utes where  applicable  to  patent 
cases. 


Pages  326-411 

422.  Declarations  in  trespass  on  the 
case. 

423.  The  statement  of  the  right  of 
action,  in  respect  of  the  inven- 
tor. 

424.  In  respect  of  the  novelty  and 
utility  of  the  invention. 

425.  In  respect  of  the  absence  of 
public  use  or  sale  more  than 
two  years  before  application  for 
a  patent. 


XV111 


CONTENTS. 


426.  In    respect   of    the    patentee, 
where  he  is  another  than  the 
inventor. 

427.  In  respect  of  the  application 
for  the  patent. 

428.  In  respect  of  the  letters  patent. 

429.  In  respect  of  a  reissue. 

430.  In  respect  of  a  disclaimer. 

431.  In  respect  of  an  extension. 

432.  In    respect    of    the    plaintiff's 
title. 

433.  In  respect  of  profert. 

434.  In  respect  of  infringement. 

435.  In  respect  of  the  time  of  in- 
fringement. 

436.  In  respect  of  the  damages. 

437.  The  conclusion  of  the  declara- 
tion. 

438.  Substantial  and  not  technical 
accuracy  required  in  declara- 
tions. 

439.  Dilatory  pleas. 

440.  Twenty-seven  defences  plead- 
able  in  bar  in  patent  actions. 

441.  The  twenty-seven  defences  re- 
viewed in  respect  of  their  na- 
tures and  effects. 

442.  Special  pleading. 

443.  The  general  issue  accompanied 
by  a  statutory  notice  of  special 
matter. 

444.  Notices  of  special  matter. 

445.  Defences    based    on    facts   of 
which  courts  take  judicial  no- 
tice, need  not  be  pleaded. 

446.  The  first  and  second  defences. 

447.  The  third  defence. 

448.  The  fourth  defence. 

449.  The  fifth  and  sixth  defences. 

450.  The  seventh  defence. 

451.  Tile  eighth  defence. 

452.  The  ninth  and  tenth  defences. 

453.  The  eleventh  defence. 

454.  The  twelfth  defence. 

455.  The  thirteenth  defence. 

456.  The  fourteenth  defence. 

457.  The  fifteenth  defence. 


458.  The  sixteenth  defence. 

459.  The  seventeenth  defence. 

460.  The  eighteenth  defence. 

461.  The  nineteenth  defence. 

462.  The  twentieth  defence. 

463.  The  twenty-first  defence. 

464.  The  twenty-second  defence. 

465.  The  twenty-third  and  twenty- 
fourth  defences. 

466.  The  twenty-fifth  defence. 

467.  The      twenty- sixth      defence: 
estoppel. 

468.  Estoppel  by  matter  of  record : 
resjudicata. 

469.  Estoppel  by  matter  of  deed. 

470.  The  twenty-sixth  defence;  how 
pleaded. 

471.  The  twenty-seventh  defence: 
statutes  of  limitation.         [tion. 

472.  The  national  statute  of  lirnita- 

473.  Its    operation    on    rights    of 
action    based      upon      patents 
which  expired  prior  to  July  8, 
1864  ;  and  on  rights  of  action 
based  upon  patents  which  ex- 
pired   between    that    day    and 
July  8,  1870. 

474.  Its    operation     on    rights    of 
action    based    \ipon    infringe- 
ments   committed  before  July 
8,  1870,  of  patents  which  were 
in  force  on   that  day  ;  and  on 
rights  of  action  based  upon  in- 
fringements of  patents  commit- 
ted after  that  day  and  before 
June  22,  1874. 

475.  Its  operation  on  rights  of  ac- 
tion based  upon  infringements 
of  original  terms  of  extended 
patents. 

476.  State  statutes  of  limitations  do 
not  apply  to  any  right  of  action 
which  is    attended    to  by  the 
national  statute  ;  that  is,  to  any 
right  of  action  based  on  an  in- 
fringement   committed    before 
June  22,  1874. 


CONTEXTS. 


XIX 


477.  The  question  of  the  applicabil     |  501. 
ity  of  State  statutes  of  limita-  502. 
tiou  to  rights  of  action  for  in  503. 
friugemeuts    committed    after  504. 
June  22,  1874. 

478.  Replications,    rejoinders,    and  505. 
sur-rejoiuders,  where  licenses  or  506. 
releases  are  pleaded. 

479.  Replications,where  the  national  507. 
statute  of  limitation  is  pleaded. 

480.  Replications    and    rejoinders,  508. 
where  a  State  statute  of  limita- 
tion is  pleaded.  509. 

481.  The  similiter. 

482.  Demurrers. 

483.  Demurrers  to  declarations.  510. 

484.  Demurrers  to  pleas. 

485.  Demurrers  to  replications.  511. 

486.  Joinders  in  demurrer. ' 

487.  Trial  of  actions  at  law  for  in-  512. 
fringements  of  patents.  513. 

488.  Trial  by  jury.  514. 

489.  Rules  of  practice.  515. 

490.  Rules  of  evidence.  516. 

491.  Letters  patent  as  evidence.  |  517. 

492.  Reissue  letters  patent  are  pri-  518. 
ma  facie  evidence  of  their  own  519. 
validity.  520. 

493.  Extensi ons  of  patents  are  primn  521. 
facie  evidence  of  their  own  va-  522. 
lidity.  523. 

494.  Letters  patent  presumed  to  be  524. 
in  force  till  the  end  of  the  term  525. 
expressed  on  their  face.  526. 

495.  Evidence  of  title.  527. 

496.  Neither  licenses;   releases,  nor  528. 
omission  to  mark   "  patented  "  529. 
need  be  negatived  in  a  plain-  530. 
tiff's  prima  facie  evid-ence.  531 . 

497.  Evidence  of    the    defendant's  532. 
doings.  533. 

498.  Expert  evidence    of    infringe-  534. 
ment.  535. 

499.  Hypothetical  questions  for  ex- 
perts. 536. 

500.  Expert   testimony  relevant  to 
the  state  of  the  art. 


Cross-examination  of  experts. 

Evidence  of  damages. 

Defendant's  evidence  in  chief. 

Evidence  to  sustain  the  first 
defence. 

To  sustain  the  second  defence. 

To  sustain  the  third  defence, 
when  based  on  prior  patents. 

When  based  ou  prior  printed 
publications. 

When  based  on  prior  knowl- 
edge or  use. 

Rebutting  evidence  to  the 
third  defence,  when  based  on 
prior  knowledge  or  use. 

Rebutting  evidence  to  the 
third  defence,  however  based. 

Evidence  to  sustain  the  fourth 
defence. 

To  sustain  the  fifth  defence. 

The  sixth  defence. 

The  seventh  defence. 

The  eighth  defence. 

The  ninth  defence. 

The  tenth  defence. 

The  eleventh  defence. 

The  twelfth  defence. 

The  thirteenth  defence. 

The  fourteenth  defence. 

The  fifteenth  defence. 

The  sixteenth  defence. 

The  seventeenth  defence. 

The  eighteenth  defence. 

The  nineteenth  defence. 

The  twentieth  defence. 

The  twenty-first  defence. 

The  twenty-second  defence. 

The  twenty-third  defence. 

The  twenty-fourth  defence. 

The  twenty  fifth  defence. 

The  twenty-sixth  defence. 

The  twenty-seventh  defence. 

How  testimony  is  taken  in  ac- 
tions at  law. 

When  the  judge  may  direct  the 

jury  to  return  a  verdict  for  the 

defendant. 


XX 


CONTENTS. 


587.  Instructions  to  juries. 

538.  Verdicts. 

539.  New  trials. 

540.  Trials  by  a  judge  without  a 
jury. 

541.  Trial  by  referee. 

542.  Judgments. 

543.  Costs. 

544.  Costs  under  the  statute. 

545.  Attorney's  docket  fees. 

546.  Clerk's  fees. 

547.  Magistrate's  fees. 


548.  Witness  fees. 

549.  Taxation  of  costs. 

550.  Writs  of  error. 

551.  Bills  of  exception. 

552.  Erroneous  instructions,  and  re- 
fusals to  instruct. 

553.  Exceptions  to  instructions,  and 
to  refusals  to  instruct. 

554.  Time  when  exceptions  must  be 
noted,  and  time  when  bills  of 
exception  must    be  drawn  up 
and  signed. 


CHAPTER  XIX. 


DAMAGES.. 


555.  The  generic  measure  of  dam- 
ages. 

556.  Established  royalties  as  specific 
measures  of  damages. 

557.  Tests   applied  to  royalties   on 
behalf  of  defendants. 

558.  Tests  applied  to    royalties  on 
behalf  of  plaintiffs. 

559.  Money  paid  for  infringement 
already  committed,  is  no  meas- 
ure   of    damages    in    another 
case. 

560.  Royalties  reserved  on  sales  of 
patents. 

561.  Royalties  for  licenses  to  make 
and  use,  and  royalties  for  li- 
censes to  make  and  sell. 


Pages  412-425 

562.  Proportion  of  licensed  to  unli- 
censed practice  of  an  invention. 

563.  Measure  of  damages  in  the  ab- 
sence of  an  established  royalty. 

564.  Damages  for  unlicensed  mak- 
ing, without  unlicensed  selling 
or  using. 

565.  Evidence  of  damages. 

566.  Indirect    consequential    dam- 


567.  Exemplary  damages. 

568.  Increased  damages. 

569.  Actual  damages  not  affected  by 
infringement  being  unintended. 

570.  Counsel  fees  and  other  expen- 
ses. 

571.  Interest  on  damages. 


CHAPTER  XX. 
ACTIONS  IN  EQUITY... Pages  426-480 

578.-  The  introductory  part. 

579.  The  stating  part. 

580.  The  prayer  for  relief. 

581.  The  interrogating  part. 

582.  The  prayer  for  process. 

583.  The  signature. 

584.  The  oath. 

585.  Bills  to  perpetuate  testimony. 


572.  Jurisdiction  of  equity  in  patent 
causes. 

573.  Jurisdiction  of  equity  to  assess 
and  decree  damages. 

574.  The  complainant. 

575.  The  defendant. 

576.  Original  bills. 

577.  The  title  of  the  court. 


CONTENTS. 


XXI 


586.  Amendments  to  bills,  when  al- 
lowed. 

587.  Amendments    to    bills,  when 
necessary. 

588.  Demurrers,  pleas,  and  answers. 

589.  Pleas  in  equity. 

590    Arguments    upon    pleas,    and 
replications  to  pleas. 

591.  Defences  in  equity  cases. 

592.  Non-jurisdiction  of  equity. 
•693.  The  same  subject  continued. 

594.  Non- jurisdiction  in  equity,  how 
set  up  as  a  defence. 

595.  Prior   adjudication    at  law  is 
not  necessary  to  jurisdiction  in 
equity. 

596.  Laches. 

597.  Laches,  how  set  up. 

598.  The  first  of  the  twenty-seven 
defences. 

599.  The  second  defence. 

600.  The  third  defence. 

601.  The  fourth  defence. 

602.  The  fifth  and  sixth  defences. 

603.  The  seventh  defence. 

604.  The  eighth  defence. 

605.  The  ninth  and  tenth  defences. 

606.  The  eleventh  defence. 

607.  The  twelfth  defence. 

608.  The  thirteenth  defence. 

609.  The  fourteenth  defence. 

610.  The  fifteenth  defence. 

611.  The  sixteenth  defence. 

612.  The  seventeenth  defence. 

613.  The  eighteenth  defence. 

614.  The  nineteenth  defence. 

615.  The  twentieth  defence. 

616.  The  twenty-first  defence. 

617.  The  twenty-second  defence. 

618.  The  twenty  third  defence. 

619.  The  twenty-fourth  defence. 

620.  The  twenty-fifth  defence. 

621.  The  twenty-sixth  defence. 

622.  The  twenty-seventh  defence. 

623.  Replications. 

624.  Subordinate    bills  in    aid  of 
original  bills. 


625.  Supplemental  bills. 

626.  Bills  in  the  nature  of  supple- 
mental bills. 

627.  Bills  of  revivor. 

628.  Bills  in  the  nature  of  bills  of 
revivor. 

629.  Bills  of    revivor  and    supple- 
ment. 

630.  Leave  of  court  to  file  supple- 
mental bills,  and    bills  in  the 
nature  of  supplemental  bills. 

631.  Demurrers,  pleas,  and  answers 
to  supplemental    bills,  and    to 
bills  in  the  nature  of  supple- 
mental bills. 

632.  Hearings. 

633.  Interlocutory  hearings. 

634.  Questions  of  law    arising   on 
hearings. 

635.  Questions   of    fact   arising  on 
hearings. 

636.  Evidence  in  support  of  the  bills 

637.  Evidence    in  support    of    de- 
j  638.  Testimony.  [fences. 

639.  Depositions. 

640.  Depositions    taken     in    other 
cases. 

641.  Documentary  evidence. 

642.  Trial  by  jury  in  equity  cases. 

643.  Hearings  by  masters  in  chan- 
cery. 

644.  Interlocutory  decrees. 

645.  Petitions  for  rehearings. 

646.  Rehearings  for  matter  apparent 
on  the  record. 

647.  Rehearings    on     account     of 
newly  discovered  evidence. 

648.  Supplemental  bills  in  the  na- 
ture of  bills  of  review. 

649.  Final  decrees. 

650.  Bills  of  review. 

651.  Bills  of  review  to  correct  errors 
apparent  on  the   pleadings   or 
final  decree. 

652.  Bills    of  review  to    introduce 
evidence  discovered    after    the 
entry  of  the  final  decree. 


XX11 


CONTENTS. 


653.  Bills  in  the  nature  of  bills  of 
review. 

654.  Appeals. 

655.  Hearings  on  appeals. 


656.  Decisions  on  appeals. 

657.  Certificates  of  division  of  opin- 
ion. 


CHAPTEK  XXI. 
INJUNCTIONS Pages  481-517 


658.  Jurisdiction  to  grant  injunc- 
tions. 

659.  Preliminary  injunctions. 

660.  Bills  for  preliminary  injunc- 
tions. 

661.  Notices  of  motions  for  prelimi- 
nary injunctions. 

662.  Motions    for    preliminary    in- 
junctions. 

663.  Suspensions    of    motions    for 
preliminary  injunctions. 

664.  Temporary  restraining  orders. 

665.  Elements  of  prima  facie  rights 
to  preliminary  injunctions. 

666.  Prior  adjudication. 

667.  Public  acquiescence. 

668.  Duration  of    public  acquiesc- 
ence in  a  strict  monopoly. 

669.  Duration  of  public  acquiesc- 
ence in  a  licensed  monopoly. 

670.  Public  acquiescence  need  not 
be  universal  to  be  efficacious. 

671.  Decrees  pro  confesso. 

672.  Consent  decrees. 

673.  Defendant's  admission  of  va- 
lidity. 

674.  Interference  decisions. 

675.  The  complainant's  title. 

676.  Infringements. 

677.  Defences  to  motions  for  pre- 
liminary injunctions;  and  first 
by  way  of  traverse. 

678.  Defences  by  way  of  confession 
and  avoidance. 

679.  Averting  effect  of  prior  adjudi- 
cation. 


680.  Averting  effect  of  public  ac- 
quiescence. 

681.  Averting  preliminary  injunc- 
tion by  proving  repeal  or  ex- 
piration of  patent,  or  fault  in 
title  thereto. 

682.  Averting  preliminary  injunc- 
tion by  proving  license. 

683.  By  proving  estoppel. 

684.  By  showing  laches. 

685.  Preliminary    injunction    must 
generally  follow  a  cause  and  an 
application  therefor. 

686.  Bonds  instead  of  injunctions, 
where    complainant  grants    li- 
censes. 

687.  Where    infringing  machinery 
embodies  non-infringing  feat- 
ures,  also  where  it  was    con- 
structed under  a  junior  patent. 

688.  Bonds  required  from  complain- 
ants in  certain  cases. 

689.  Injunctions  not  averted  by  the 
existence  of  a  remedy  at  law. 

690.  Injunction     pro     confesso    on 
withdrawal  of  opposition  to  a 
motion  for  an  injunction. 

691.  Discretion    of    the    court    in 
granting    or    refusing    injunc- 
tions. 

692.  Motions  to  dissolve  preliminary 
injunctions. 

693.  Motions  to  dissolve  for  errors 
in  point  of  law. 

694.  Motions  to  dissolve  on  account 
of  newly  discovered  evidence. 


CONTEXTS. 


xxm 


695.  Reinstatement  of  dissolved  in- 
junctions. 

696.  Consequences  of  obedience  or 
disobedience     to      injunctions 
which  are  subsequently  dissolv- 

697.  Permanent  injunctions.       [ed. 

698.  Refusal  of  permanent  injunc- 
tion, because  the  patent  has  ex- 
pired. 

699.  Because  the    complainant  has 
assigned  the  patent. 

700.  Because  the  defendant  is  dead, 
or,  if  a  corporation,  is  dissolved. 

701.  Cessation  of  infringement  no 
ground  for  refusal  to  enjoin. 

702.  Postponement  of  permanent  in- 
junctions. 

703.  Suspension    of   permanent  in- 
junctions. 


704.  Dissolution   of  permanent  in- 
junctions. 

705.  Injunctions  granted  independ- 
ent   of    other    relief ;    but    no 
injunctions    issued     in    trivial 
cases,     nor    to    restrain    com- 
plainants   from     suing     third 
parties. 

706.  The    duration   of    injunctions 
generally  limited  by  the  term 
of  the  patent. 

707.  The    duration  of    injunctions 
granted  by  district  judges    in 
vacation. 

708.  Attachments  for  contempts. 

709.  Improper  defences  to  motions 
for  attachments. 

710.  Penalties  for  violations  of  in- 
junctions. 


CHAPTER  XXII. 
PROFITS Pages  518-550 


711.  The  inf  ringer's  profits  recover- 
able in  equity. 

712.  In  cases  of  joint  infringement. 

713.  In  cases  of  infringement  partly 
unprofitable. 

714.  What  spaces  of  time  an  account 
of  profits  may  cover. 

715.  The  generic  rule  for  ascertain- 
ing in f ringer's  profits. 

716.  Complainant's  damages  no  cri- 
terion of  defendant's  profits. 

717.  Defendant's  profits  in  cases  of 
unlawfully  making  and  selling 
articles   covered    by  the   com- 
plainant's patent. 

718.  Method  of  ascertaining  cost  of 
making  and  selling  infringing 
articles. 

719.  Burden  of  proof  when  it    is 
necessary  to  separate  profits  due 
to  patented  features,  from  prof- 


its due  to  other  features,  of  an 
infringing  article. 

720.  Method  of  making  the  separa- 
tion where  defendant  made  and 
sold    the    patented     invention 
separately,  as  well  as  in  connec- 
tion with  other  things. 

721.  Method  where  defendant  pays 
royalty  for  right   to  make  and 
sell  the  features  not  covered  by 
the  patent  in  suit. 

722.  Cases  where  no  separation  is 
required  or  allowed. 

723.  Method  of  making  the  separa- 
tion by  the  criterion  of  compar- 
ative cost. 

724.  Defendant's  profits  in  cases  of 
unlawfully  selling  articles  partly 
or  wholly  covered  by  complain- 
ant's patent. 

725.  Defendant's  profits  in  cuscs  of 


XXIV 


CONTENTS. 


unlawful  using  of  patented 
processes  or  things,  ascertained 
by  the  rule  in  Mowry  v.  Whit- 
ney. 

726.  Standards    of    comparison    in 
respect  of    being  open   to  the 
public. 

727.  In  respect  of  being  adequate  to 
accomplish  an  equally  beneficial 
result. 

728.  Recoverable  profits  may  result 
from  affirmative  gains,  or  from 
saving  from  loss. 

729.  Affirmative  gain. 

730.  Saving  from  loss. 

731.  Affirmative    gain    and  saving 
from  loss. 

732.  Standards  of  comparison  need 
not  have  been  used  by  the  in- 
f  ringer. 

733.  A  standard  of  comparison  must 
have  been  known  at  the  time  of 
the  infringement,  but  need  not 
have  been  in  existence  at  any 
earlier  period. 

734.  Method  of  selecting  the  proper 
standard  of  comparison. 

735.  The  rule  in  Mowry  v.  Whitney 
has  no  application  to  cases  of 
infringement  by  making  or  by 
selling. 


736.  Questions  of    interest    on    in- 
fringers'  profits,  considered  in 
the    light    of    Supreme    Court 
precedents. 

737.  Considered  in  the  light  of  Cir- 
cuit Court  precedents. 

738.  Considered    in    the    light    of 
equitable  doctrines  and  princi- 
ples. 

739.  Proceedings  before  masters. 

740.  Evidence  before  masters. 

741.  Objections  to  evidence  before 
masters. 

742.  Questions  of  the  extent  of  the 
defendant's  infringement. 

743.  Questions  relevant  to  different 
sorts  of  defendant's  alleged  in- 
fringement. 

744.  Master's  reports. 

745.  Exceptions  to  master's  reports. 

746.  Defendant's      exceptions      to 
master's  reports. 

747.  Defendant's  affirmative  excep- 
tions to  master's  reports. 

748.  Defendant's    negative    excep- 
tions to  master's  reports. 

749.  Complainant's    exceptions    to 
master's  reports. 

750.  Outline  of  practice  relevant  to 
master's  findings. 


CONTENTS. 


XXV 


APPENDIX. 


THE  PATENT  STATUTES. 
THE  REPEALED  STATUTES. . 


.Pages  553-634 


Patent  Act  of  1790 553     Patent  Act  of  1849 597 


1793  

557 
562 
563 
564 
565 
567 
568 
582 
589 
593 
595 

1852  . 

597 

1794  

Feb.  18,  1861  .. 
March  2,  1861. 
"     1862  

.  598 
.  599 
606 

1800  

1819  

July  8,  1832.  .  .  . 
July  13,  1832.  .  .  . 
1836  

1863  

.  606 

1864  

.  607 

"     1865  ... 

608 

1837  

1866  ...  . 

608 

1839  

"     1870 

(vll'l 

1842  

March  3,  1871..  633 
March  24,  1871..  633 

.  .  Pases  634-660 

1848  

ED  STATUTES. 

440.  Clerks  and  employes. 

441.  Secretary  of  the  Interior. 

475.  Establishment  of    the  Patent 
Office. 

476.  Officers  and  employes. 

477.  Salaries. 

478.  Seal.  [chief  clerk. 

479.  Bonds   of    Commissioner  and 

480.  Restrictions  upon  officers  and 
employes. 

481.  Duties  of  Commissioner. 

482.  Duties  of  examiners-in-chief. 

483.  Establishment  of  regulations. 

484.  Arrangement  and  exhibition  of 
models,  &c. 

485.  Disposals  of  models  on  rejected 
applications. 

486.  Library. 


SECTION 

487.  Patent-agents  may  be  refused 
recognition. 

488.  Printing  of  papers  filed. 

489.  Printing  copies  of  claims,  laws, 
decisions,  &c. 

490.  Printing      specifications    and 
drawings. 

491.  Additional  specifications  and 
drawings. 

492.  Lithographing  and  engraving. 

493.  Price  of  copies  of  specifications 
and  drawings. 

494.  Annual    report  of    the  Com- 
missioner. 

496.  Disbursements  for  Patent- Of- 
fice. 
629.  Jurisdiction  of  Circuit  Courts. 


XXVI 


CONTENTS. 


SECTION 

699.  Writs  of  error   and  appeals, 
without  reference  to  amount. 

892.  Copies  of  records,  &c.,  of  Pat- 
ent-Office. 

893.  Copies     of     foreign     letters- 
patent. 

894.  Printed  copies  of  specifications 
and  drawings  of  patents. 

973.  Costs   where    disclaimers   are 
necessary. 

4883.  Patents,  how  issued,  attested, 
and  recorded. 

4884.  Their  contents  and  duration. 

4885.  Date  of  patent. 

4886.  What  inventions  are  patenta- 
ble. 

4887.  Patents  for  inventions  previ- 
ously patented  abroad. 

488§.  Requisites  of  specification  and 
claim. 

4889.  Drawings,  when  requisite. 

4890.  Specimens  of  ingredients,  &c. 

4891.  Model,  when  requisite. 

4892.  Oath  required  from  applicant. 

4893.  Examination  and  issuing  pat- 
ent. 

4894.  Limitation  upon  time  of  com- 
pleting application. 

4895.  Patents  granted  to  assignees. 

4896.  When, and  on  what  oath,  exec- 
utor or  administrator  may  ob- 
tain patent. 

4897.  Renewal    of    application    in 
cases  of  failure  to  pay  fees  in 
season. 

4898.  Assignment  of  patents. 

4899.  Persons  purchasing  of  invent- 
or before  application  may  use  or 
sell  the  thing  purchased. 

4900.  Patented    articles    must    be 
marked  as  such. 

4901.  Penalty  for  falsely  marking  or 
labelling  articles  as  patented. 

4902.  Filing  and  effect  of  caveats. 

4903.  Notice  of  rejection  of  claim 
for  patent  to  be  given  to  appli- 
cant. 


SECTION 

4904.  Interferences. 

4905.  Affidavits  and  depositions. 

4906.  Subpo?nas  to  witnesses. 

4907.  Witness  fees. 

4908.  Penalty  for  failingtoattend  or 
refusing  to  testify. 

4909.  Appeals  from  primary  exam- 
iners to  examiners  in-chief. 

4910.  From    examiners-in-chief   to 
Commissioner. 

4911.  From  the  Commissioner  to  the 
Supreme  Court,  D.  C. 

4912.  Notice  of  such  appeal. 

4913.  Proceedings  on  appeal  to  Su- 
preme Court,  D.  C. 

4914.  Determination  of  such  appeal 
and  its  effect. 

4915.  Patents  obtainable  by  bill  in 
equity. 

4916.  Reissue  of  defective  patents. 

4917.  Disclaimer. 

4918.  Suits  touching  interfering  pat- 
ents. 

4919.  Suits  for  infringement;  dam- 
ages 

4920.  Pleading  and  proof  in  actions 
for  infringement. 

4921.  Power  of  courts  to  grant  in- 
junctions   and    estimate  dam- 
ages. 

4922.  Suit  for  infringement  where 
specification  is  too  broad. 

4923.  Patent  not  void  on  account  of 
previous  use  in   foreign  coun- 
try. 

4924.  Extension  of  patents  granted 
prior  to  March  2,  1861. 

4925.  What  notice  of  application  for 
extension  must  be  given. 

4926.  Applications  for  extension  to 
whom  to  be  referred. 

4927.  Commissioner  to  hear  and  de- 
cide   the    question    of    exten- 
sion. 

4928.  Operation  of  extension. 

4929.  Patents    for  designs  author- 
ized. 


CONTEXTS. 


XXV11 


4930.  Models  of  designs. 

4931.  Duration  of  patents  for  de- 
signs. 

4932.  Extension  of  patents  for  de- 
signs. 


4933.  Patents  for  designs  subject  to 
general  rules  of  patent-law. 

4934.  Fees    in    obtaining    patents, 
&c. 

4935.  Mode  of  payment. 

4936.  Refunding. 


THE  PATENT  STATUTE  OF  1875 Page  660 

THE  PATENT  STATUTE  OF  1888 "     661 

FOKMS  OF  PATENT  PLEADINGS. 

DECLARATION Page  662 

PLEA  IN  BAR "  665 

REPLICATION "  668 

REJOINDER ••  669 

SUR-REJOINDER "  670 

BILL  OF  COMPLAINT "  670 

PLEA  IN  EQUITY "  675 

ANSWER "  677 

REPLICATION  IN  EQUITY "  681 


EQUITY  RULES Pages  682-713. 


TABLE  OF  CITED  CASES. 


Names  of  Cases.  Where  reported.  Pages  in  this  hook. 

Abbett  v.  Zusi 5  Bann.  &  Ard 219 

Acme  Hay  Harvesting  Co.  v.  Martin.  33  Fed.  Rep 37 

Adams  t>.  Bellaire  Stamping  Co 28  Fed.  Rep 25 

Adams  v.  Brown 7  Cushing  (Mass.) 550 

Adams  v.  Burke 17  "Wallace 220,  230,  232 

Adams  v.  Howard 19  Fed.  Rep 403,  441 

Adams  v.  Howard 22  Fed.  Rep 238,  239 

Adams  v.  Iron  Co 26  Fed.  Rep 441,  442 

Adams  v.  Jones 1  Fisher 72,  88 

Adams  v.  Loft 4  Bann.  &  Ard 37 

Adams  t>.  Mfg.  Co 3  Bann.  &  Ard 269 

Adams  v.  Stamping  Co 25  Fed.  Rep 308,  364 

Adams  v.  Stamping  Co 28  Fed.  Rep 414 

Agawam  Co.  v.  Jordan 7  Wallace 42,  72,  192, 194,  195, 

200,  207,  348,  349,  351,  386,  446 

Ager  v.  Murray 105  TJ.  S 120,  221,  222 

Aiken  v.  Bemis 3  Woodbury  &  Minot 272,  399,  400 

Aiken  v.  Dolan 3  Fisher 38,  159 

Aiken  v.  Print  Works 2  Cliff 204 

Alabastine  Co.  v.  Payne 27  Fed.  Rep 316 

Albany  Steam  Trap  Co.  v.  Felt- 

housen 20  Fed.  Rep 403 

Albright  v.  Teas 106  U.  S 301 

Alden  v.  Dewey ...1  Story 399 

Allen®.  Blunt 2  Woodbury  &  Minot 399 

Allen  v.  Deacon 21  Fed.  Rep 344 

Allis  v.  Buckstaff 13  Fed.  Rep 446 

Allis  «.  Stowell 5  Bann.  &  Ard 471 

Allis  v.  Stowell 16  Fed.  Rep 511 

Allis®.  Stowell 19  Off.  Gaz 514 

Allison  v.  Brooklyn  Bridgfe. 29  Fed.  Rep 141 

Allred  v.  Bray 41  Missouri 314 

Alteneck's  Appeal 23  Off.  Gaz 97 

American  Ballast  Log  Co.  v.  Cotter.  .11  Fed.  Rep   464 


XXX  TABLE    OF   CITED    CASES. 

Names  of  Cases.  Where  reported.  Pages  in  this  book 

American  Bell  Telephone  Co.  «. 

Albright 32  Fed.  Rep 242 

American  Bell  Telephone  Co.    ». 

Cushman  Telephone  Co 35  Fed.  Rep 69 

American  Bell  Telephone  Co.    ». 

Cushman  Telephone  Co 36  Fed.  Rep 509 

American  Bell  Telephone  Co.    v. 

Cushman  Telephone  Co 45  Off.  Gaz 117 

American  Bell  Telephone  Co.   ». 

Dolbear 15  Fed.  Rep 285 

American  Bell  Telephone  Co.  v. 

Dolbear 17  Fed.  Rep 54 

American  Bell  Telephone   Co.  ®. 

Globe  Telephone  Co 31  Fed.  Rep 61 

American   Bell  Telephone   Co.  v. 

Kitsell 35  Fed.  Rep 469 

American   Bell   Telephone  Co.  «. 

National  Telephone  Co 27  Fed.  Rep 250,  358,  488 

American  Bell  Telephone  Co  v. 

People's  Telephone  Co 22  Fed.  Rep 60 

American   Bell  Telephone   Co.  ».  • 

Southern  Telephone  Co 34  Fed.  Rep 339,  431,  444,  464 

American  Bell  Telephone  Co.  v. 

Spencer 8  Fed.  Rep 156,  285 

American  Box  Machine  Co.  «.  Day.. 32  Fed.  Rep 271 

American   Clay  Bird   Co.  v.  Clay 

Pigeon  Co 31  Fed.  Rep 246 

American   Cotton-Tie  Supply  Co. 

«.  McCready 17  Blatch 511 

American  Cotton-Tie   Co.  ®.  Sim- 
mons  106  U.  S 233 

American  Diamond  Drill   Co.  «. 

Machine  Co 21  Fed.  Rep... 177 

American  Diamond  Drill   Co.  v. 

Machine  Co 32  Fed.  Rep 542 

American  Diamond  Rock  Boring 

Co.  «.  Marble  Co .2  Fed.  Rep 509 

American  Diamond  Rock  Boring 

Co.  v.  Sheldon 18  Blatch 470,  509 

American  Diamond  Rock  Boring 

Co.  «.  Sullivan  Machine  Co 14  Blatch 287 

American  Hide  and  Leather  Split- 
ting Machine  Co.  «.  Machine  Co.4  Fisher 94,  113 

American  Insurance  Co.  v.  Canter . .  1  Peters 478 

American  Middlings  Purifier  Co. 

v.  Atlantic  Milling  Co 3  Bann.  &  Ard 501 


TABLE    OF   CITED   CASES.  XXXI 

Names  of  Cases.  Where  reported.  Pages  in  this  book. 

American  Middlings  Purifier  Co. 

«.  Christian 3  Bann.  &  Ard 462,  464,  488,  499, 

500,  510 
American  Middlings  Purifier  Co. 

T.  Vail 15  Blatch 504 

American    Nicholson     Pavement 

Co.  «.  Elizabeth 4  Fisher 497,  502 

American    Nicholson     Pavement 

Co.  C.Elizabeth 1  Bann.  &  Ard 523 

American  Saddle  Co.  v.  Hogg 6  Fisher 472 

American   Shoe-Tip    Co.   v.    Pro- 
tector Co 2  Bann.  &  Ard 170 

Ames  v.  Howard 1  Sumner 139,  400 

Amesr.  Spring  Bed  Co 24  Fed.  Rep 31 

Andrews  v.  Carman 13  Blatch 54 

Andrews  v.  Creegan 7  Fed.  Rep 465 

Andrews  v.  Hovey 123  U.  S.  124  U.  8 74,  386,  397 

Andrews  v.  Long 12  Fed.  Rep 265 

Andrews  v.  Spear 3  Bann.  &  Ard 500 

Anilin  v.  Higgin 15  Blatch 169 

Anson v.  Woodbury 12Off.  Gaz 105 

Ansouia  Brass  &  Copper  Co.   v. 

Electrical  Supply  Co 32  Fed.  Rep 37 

Ansonia  Brass  &   Copper  Co.   v. 

Electrical  Supply  Co 35  Fed.  Rep 37 

Anthony  v.  Carroll 2  Bann.  &  Ard 364 

Arnold  v.  Bishop 1  McArthur's  Patent  Cases 43,  105 

Arnold  v.  Phelps 20  Fed.  Rep 262 

Aron  v.  Manhattan  Ry.  Co 26  Fed.  Rep 37 

Arthur  v.  Griswold 55  New  York 322 

Asbestos  Felting  Co.  v.  Salamander 

Felting  Co 13  Blatch 247,  511 

Ashcroft  v.  Walworth 1  Holmes 213,  215,  222 

Asmus  v.  Alden 27  Fed.  Rep 26 

Asmus  «.  Freeman 34  Fed.  Rep 415,  418 

Aspinwall  Mfg.  Co.  v.  Gill .32  Fed.  Rep 213,  217,  226 

Atlantic  Giant  Powder  Co.  i>.  Ditt- 

mar  Powder  Mfg.  Co 9  Fed.  Rep 514 

Atlantic     Giant    Powder    Co.    v. 

Goodyear 3  Bann.  &  Ard 289,  488,  497 

Atlantic    Giant    Powder    Co.    n. 

Mow  bray 2  Bann.  &  Ard 289 

Atlantic  Works  v.  Brady 107  U.  S 21,  23 

Attorney-General  v.  Ruinford  Chem- 
ical Works. .  .  .2  Bann.  &  Ard. . ,  .250 


XXXJi  TABLE   OF   CITED   CASES. 

Names  of  Cases.  "Where  reported.  Pages  in  this  book. 

Atwood  v.  Portland  Co 10  Fed.  Rep 186,  332 

Avery  v.  Wilson 20  Fed.  Rep 314 

Babcock  v.  Degener 1  Me  Arthur's  Patent  Cases 70,  385 

Babcock  v.  Judd 5  Bann,  &  Ard 279 

Babcock  &  Wilcox  Co.  v.  Pioneer 

Iron  Works 34  Fed.  Rep 37 

Badische  Auilin  and  Soda  Fabrik 

v.  Cummins 4  Bann.  &  Ard 59 

Badische  Anilin  and  Soda  Fabrik 

v.  Hamilton  Mfg.  Co 3  Bann.  &  Ard 128 

Bailey  v.  Bussing 28  Connecticut 391 

Bailey  Wringing  Machine  Co.  «. 

Adams 3  Bann.  &  Ard 497 

Baker  v.  Whiting 1  Story 472 

Baker  Mfg.  Co.  «.  Washburn  & 

MoenMfg.  Co 18  Fed.  Rep 237 

Baldwin  v.  Bernard 5  Fisher 501 

Baldwin  v.  Sibley 1  Clifford 238 

Ball  v.  Langles 102  U.  S. 171 

Ballard  v.  Pittsburg 12  Fed.  Rep 72,  510 

Ballard  «.  Searls 130  U.  S 475 

Baltimore  &  Potomac  Railroad  Co. 

v.  Fifth  Baptist  Church 108  U.  S 318 

Bancroft  v.  Acton 7  Blatch.  . .  428 

Bank  of  Orleans  v.  Skinner 9  Paige  (N.  Y.) 433 

Bank  of  United  States  v.  Daniel 12  Peters 456 

Bantz  IB.  Frantz 105  U.  S 180 

Barker  v.  Shoots .  .18  Fed.  Rep 467 

Barker®.  Stowe 4  Bann.  &  Ard 447,  470,  472 

Barnard  «.  Gibson 7  Howard 469,  510 

Barney  ®.  Peck 16  Fed.  Rep 325 

Barrett  t>  Hall 1  Mason 43,  376 

Barren  v.  Baltimore 7  Peters 115,  122 

Barry  «.  Mfg.  Co 22  Fed.  Rep 240 

Bartholomew  ®.  Sawyer .1  Fisher 55 

Bartlett  v.  Holbrook 1  Gray  (Mass.) 235 

Bate  Refrigerating  Co.  v.  Eastman.  .11  Fed.  Rep 515 

Bate  Refrigerating  Co.  «.  Eastman.  .24  Fed.  Rep 146 

Bate  Refrigerating  Co.  v.  Gillett 13  Fed.  Rep 126 

Bate  Refrigerating  Co.  <o.  Gillett 20  Fed.  Rep 127 

Bate  'Refrigerating  Co.  «.  Gillett 24  Fed.  Rep 514 

Bate  Refrigerating  Co.  ®.  Gillett 28  Fed.  Rep 542 

Bate  Refrigerating  Co.  v.  Gillett  .  .  .30  Fed.  Rep 317,  514,  51 5 

Bate  Refrigerating  Co.  «.  Gillett 31  Fed.  Rep 292 

Bate  Refrigerating  Co.  v.  Hammond.129  U.  S 127,  128 


TABLE   OF  CITED   CASES.  XXXiii 

Names  of  Cases.  Where  reported.  Pages  in  this  book. 

Bates  v.  Coe 98  U.  S 53,  324,446 

Bates  v.  Railroad  Co 32  Fed.  Rep 418 

Bath  v.  Caton 37  Michigan  321 

Battin  v.  Taggert 17  Howard.. 59,  70,  80, 82, 140, 170,  187 

Beane  v.  Orr 2Bann.  &  Aid 498 

Bean  v.  Smallwood 2  Story 37 

Bedell  v.  Janney . 4  Gilman  (111.) 366 

Bedford  v.  Hunt 1  Mason 58,  64 

Beecher  Mfg.  Co.  v.  Atwater  Mfg. 

Co 114  U.  S 31 

Beedle  v.  Bennett 122  U.  S 72,  75,  441 

Belding  0.  Turner.. 8  Blatch 238 

Bell  t.  Daniels 1  Fisher 82,  107 

Bell  v.  Hearne 19  Howard 133 

Belle.  Stamping  Co 32  Fed.  Rep 419,  542 

Bellas  v.  Hays 5  Sergeant  &  Rawle  (Penn.) 382 

Bene  v.  Jeantet 129  U.  S 139 

Bennet  v.  Fowler 8  Wallace 394 

Berry  v.  Stockwell 9  Off .  Gaz  105 

Bevin  t>.  Bell  Co 9  Blatch 109 

Bicknell  v.  Todd 5  McLean 231 

Bierce  v.  Stocking 11  Gray  (Mass.) .  377 

Bigelow  v.  Louisville 3  Fisher 234 

Bignall  v.  Harvey 18  Blatch 60,  332,  509 

Birdsall  t>.  Coolidge 93  U.  S 332,  418,  424 

Birdsall  o.  Mfg.  Co 1  Hughes 511 

Birdsall  T.  Mfg.  Co 2  Bann.  &  Ard 514 

Birdsall  v.  McDonald 1  Bann.  &  Ard 72,82 

Birdsall  t.  Perego 5  Blatch 235 

Birdsell  9.  Shaliol 112  U.  S 242,  469 

Birdseye  v.  Heilour 26  Fed.  Rep 489 

Bischoff  «.  Withered 9  Wallace 60,  386,  391 

Black  v.  Hubbard 3  Baun.  &  Ard 203 

Black  *>.  Munson 14  Blatch ..415,  416,  525 

Black  v.  Stone 33  Alabama 213 

Black  «.  Thorn 10  Blatch 304 

Blades*.  Rand 27  Fed.  Rep 141 

Blagrove  v.  Ringgold 2  Cranch's  Circuit  Court  Reports..  408 

Blake  «.  Robertson 94  U.  S 274,  525 

Blake  v.  San  Francisco 113  U.  S 37 

Blanchard  v.  Beers 2  Blatch 291 

Blanchard  v.  Eldridge 1  Wallace 311 

Blanchard  t>.  Putnam 8  Wallace 372,  394,  409 

Blanchard  v.  Reeves 1  Fisher 266,  495 

Blanchard  «.  Sprague 1  Cliff 240 


XXXIV  TABLE   OF   CITED    CASES. 

Names  of  Cases.  Where  reported.  Pages  in  this  book. 

Blanchard's  Gun-Stock  Turning 

Factory  v.  Warner 1  Blatch 195 

Blandy  v.  Griffith 3  Fisher 40,  109,  448 

Blandy  v.  Griffith 6  Fisher 471,  472,  473 

Blessing  v.  Copper  Works 34  Fed.  Rep 335,  445 

Bliss  «.  Brooklyn 8  Blatch 192,  312 

Bliss  v.  Brooklyn 10  Blatch 62 

Bliss  D.  Haight 3  Fisher 273 

Bloomer  v.  Gilpin 4  Fisher. 239 

Bloomer  v.  McQuewan 14  Howard.  .119,  146, 194,  195,  203,  232 

Bloomer  v.  Millinger 1  Wallace 203 

Bloomer  v.  Stolley. 5  McLean 194 

Board  of  Commissioners  v.  Gorman..  19  Wallace 477 

Bogart  v.  Hinds 25  Fed.  Rep. , 311,  431 

Boomer  ».  Power  Press  Co 13  Blatch 509 

Booth*.  Seevers 19  Off.  Gaz 242 

Boston  Iron  Co.  v.  King 2  Gushing  (Mass.). 550 

Bostwick  v.  Goodrich 25  Fed.  Rep 525 

Bourne  v.  Goodyear 9  Wallace 250 

Bowker  ».  Dows 3  Bann.  &  Ard 317 

Boyd  v.  McAlpin 3  McLean 213,  495 

Boyden  ».  Burke 14  Howard 147 

Bradford  v.  Bradford 5  Connecticut 358 

Bradley  v.  Dull 19  Fed.  Rep 223 

Bradley  &  Hubbard  Mfg.  Co.  ». 

The  Charles  Parker  Co 17  Fed.  Rep 498 

Bragg  v.  City  of  Stockton 27  Fed.  Rep 429 

Brainard  v.  Cramme 12  Fed.  Rep 6,  158,  188 

Brammer  ®.  Jones 3  Fisher 503 

Bray  v.  Hartshorn 1  Cliff 399 

Brickill  v.  New  York 5  Bann.  &  Ard 124 

Bridgeport  Wood  Finishing  Co. 

«.  Hooper 5  Fed.  Rep 53 

Brig  Struggle  v.  United  States 9  Cranch 253 

Broadnax  v.  Transit  Co 5  Bann.  &  Ard 185 

Bronson  v.  Kinzie 1  Howard 115 

Brooks  «.  Ashburn .9  Georgia 315 

Brooks  v.  Bickuell  3  McLean ...201,  374,  503 

Brooks  v.  Byam 2  Story 213,  234,  239 

Brooks  «.  Fiske 15  Howard 137,  270,  277 

Brooks  v.  Jenkins 3  McLean.  155,157,202,223,375,382,393 

Brooks  v.  Miller 28  Fed.  Rep 441 

Brooks  v.  Norcross 2  Fisher 45 

Brown  v  Davis 116  U.  S 271,  274 

Brown  ».  District  of  Columbia 3  Mackey 315 

Brown  v.  District  of  Columbia 130  U.  S 24,  27 


TABLE  OF  CITED   CASES.  XXXV 

Names  of  Cases.  Where  reported.  Pages  in  this  book. 

Brown  v.  Duchesne 19  Howard 113,  114,  125 

Brown  v.  Jackson 3  Wheaton 215 

Brown  v.  Hall 6  Blatch 447 

Brown  t.  Lapham 27  Fed.  Rep 237 

Brown  t>.  Piper 91  U.  S 36,  348,  380,  445,  479 

Brown  «.  Rickets 4  Johnson's  Chancery  (N.  Y.) 539 

Brown  t>.  Shannon 20  Howard 301 

Brown  Mfg.  Co.  t.  Deere 21  Fed.  Rep 26 

Brunner's  Appeal 1  Off.  Gaz 98 

Brush  T  Coudit 20  Fed.  Rep 58 

Buerk  T.  Imhaeuser 2  Bann.  &  Ard 472,  515 

Bull  v.  Pratt ,..1  Connecticut 238 

Bullock  Printing-Press  Co.  v.  Jones.3  Bann.  &  Ard 510 

Bunker  t.  Stevens 26  Fed.  Rep 404 

Burdell  «.  Comstock 15  Fed.  Rep 441 

Burdell  t.  Denig 92  U.  S 235,  332,379,  393- 

Burden  «.  Corning 2  Fisher 155,  449 

Burdett  «.  Estey 3  Fed.  Rep 130,  156,  536,  539 

Burdett  «.  Estey 15  Blatch 158 

Burdsall  v.  Curran 31  Fed.  Rep 359 

Burney  v.  Goodyear 11  Gushing  (Mass.) 189 

Burns  v.  Meyer ,. 100  U.  S 145 

Burr  v.  Duryee 1  Wallace..  171,  175,  267,  273,  276,  282 

Burr  v.  Duryee 2  Fisher 235,  237 

Burrall  t.  Jewett 2  Paige  (N.  Y.) 62 

Burrell  «.  Haokley 35  Fed.  Rep 182.  439 

Busell  Trimmer  Co.  v.  Stevens 28  Fed.  Rep 37 

Buss  v.  Putney 38  New  Hampshire 234 

Bussard  v.  Catalino 2  Cranch's  Circuit  Court  Reports.  406 

Bussey  *.  Mfg.  Co 110  U.  S 31 

Butler  v.  Bainbridge 29  Fed.  Rep 352,  387 

Butler  v.  Steckel 27  Fed.  Rep 26 

Butterworth  v.  Hill 114  U.  S 99 

Butterworth  v.  Hoe 112  U.  S 97,  100 

Button  Fastener  Co.  *.  Lucas 28  Fed.  Rep 43 

Butz  Thermo-Electric  Co.  t>.  Elec- 
tric Co 36  Fed.  Rep 281,  284,  495 

Buzzell  «.  Fifield 7  Fed.  Rep 26 

Byamr.Eddy 2  Blatch 288 

Byam  T.  Farr 1  Curtis 290 

Byerly  *.  Oil  Works 31  Fed.  Rep 373 

Cahill  v.  Brown 3  Bann.  &  Ard 47 

Calm  v.  Wong  Town  On 19  Fed.  Rep 71 

Gaboon  v.  Ring 1  Cliff 49/275,  377 

Caldwell  v.  Jackson 7  Cranch 405 


XXXVI  TABLE   OF   CITED   CASES. 

Names  of  Cases.  Where  reported.  Pages  in  this  book. 

Caldwell  ®.  Waters 4  Cranch's  Circuit  Court  Reports.  505 

California  Paving  Co.  «.  Molitor. .  ..113  U.  S 480,  515 

Calkins  «.  Oshkosh  Carriage  Co 27  Fed.  Rep 25 

Callagban  t>.  Myers 128  U.  S 520,  524,  526,  549 

Cammack  v.  Johnson 2  New  Jersey  Equity 505 

Cammeyer  v.  Newton 94  U.  S 114,  120 

Campbell  ®.  Day 16  Vermont 213 

Campbell  v.  New  York 35  Fed.  Rep 74,  95,  471,  473 

Campbell  «.  New  York 36  Fed.  Rep 77 

Campbell  v.  New  York 45  Off.  Gaz 77 

Campbell  v.  Ward 12  Fed.  Rep 441 

Canane.  Mfg.  Co 23  Fed.  Rep 128 

Cansler  D.  Eaton 2  Jones'  Equity  Cases  (N.  C.).  . . .  215 

Canter  «.  Insurance  Companies 3  Peters 407 

Cantrellfl.  Wallick 117  U.  S 16,  54,  60,  277 

Carew  v.  Fabric  Co 1  Holmes 190 

Carlton  «.  Bokee 17  Wallace ..138,  143,  353 

Carnrick  v.  McKesson 8  Fed.  Rep 446,  447,  448 

Carrfl.  Rice 1  Fisher 136,  192,  269 

Carr  v.  United  States 98  U.  S 71 

Carroll  «.  Morse .9  Off.  Gaz 192 

Carsteadt  v.  Corset  Co 13  Blatch 517 

Carter  «.  Baker 1  Sawyer 291,  377,  420,  422 

Cartridge  Co.  t>.  Cartridge  Co 112  U.  S 152,  290 

Cary  «.  Mfg.  Co 31  Fed.  Rep 463,  464 

Gary  «.  Spring  Bed  Co 26  Fed.  Rep 505 

Cary  v.  Spring  Bed  Co , 27  Fed.  Rep 488 

Cary®.  Wolff 24  Fed.  Rep 37 

Carey®.  Miller 34  Fed.  Rep 495 

Carver  «.  Hyde  16  Peters 137,  277 

Carver  *>.  Mfg.  Co 2  Story 87,  323 

Case  v.  Brown 2  Wallace 270,  283 

Case  v.  Morey 1  New  Hampshire 208 

Case  v.  Redfield 4  McLean 213 

Castle  D.  Hutchinson 25  Fed.  Rep 119 

Catlin  v.  Insurance  Co 1  Simmer 339 

Cawood  Patent .94  U.  S 47,  264,  469,  531,  545 

Celluloid  Mfg.  Co.  v.  Chandler 27  Fed.  Rep  404 

Celluloid  Mfg.  Co.  v.  Chrolithion 

Collar  and  Cuff  Co 23  Fed.  Rep 25,  26 

Celluloid  Mfg.  Co.  ®.  Crane  Chem- 
ical Co  36Fed.Rep 28 

Celluloid  Mfg.  Co.  v.  Crofut 24  Fed.  Rep 72 

Celluloid  Mfg.  Co.  e.  Mfg.  Co 34  Fed.  Rep 496 

Celluloid  Mfg.  Co.  v.  Noyes 25  Fed.  Rep 37 

Celluloid  Mfg.  Co.  v.  Tower 26  Fed.  Rep 33,  463 


TABLE   OF   CITED   CASES.  XXXVli 

Names  of  Cases.  Where  reported.  Pages  in  this  book. 

Celluloid  Mfg.  Co.  «.  Vulcanite  Co..  13  Blatch 435 

Celluloid  Mfg.  Co.  v.  Zylonite  Co. .  .27  Fed.  Rep 183 

Celluloid  Mfg.  Co.  v.  Zylonite  Co. .  .28  Fed.  Rep 25 

Celluloid  Mfg.  Co.  v.  Zylonite  Co... 30  Fed.  Rep 316 

Celluloid  Mfg.  Co.  v.  Zylonite  Co...  31  Fed.  Rep 7 

Celluloid  Mfg.  Co.  v.  Zylonite  Co. .  .34  Fed.  Rep 333 

Celluloid  Mfg.  Co.  «.  Zylonite  Co.  ..35  Fed.  Rep 28 

Celluloid  Mfg.  Co.  v.  Zylonite  Nov- 
elty Co 30  Fed.  Rep 25 

Chaffee  v.  Belting  Co 22  Howard 203,  232 

Chambers  v.  Smith 5  Fisher 232,  234,  239 

Chandler  v.  Ladd 1  McArthur's  Patent  Cases 21 

Chaser.  Tattle 27  Fed.  Rep 435 

Chase  v.  Walker 3  Fisher 212 

Cheever  v.  Wilson 9  Wallace 395 

Chicago  Fruit  House  Co.  v.  Busch..2  Bissell 291 

Chicopee  Folding  Box  Co.  v.  Rogers.  .32  Fed.  Rep  .    . .  246 

Child  v.  Adams 1  Fisher 92 

Child  v.  Iron  Works 19  Fed.  Rep 413,  428 

Christman  v.  Rumsey 17  Blatch 158 

Cincinnati    Ice    Machine    Co.    v. 

Brewing  Co 31  Fed.  Rep 263 

City  of  Concord  v.  Norton 16  Fed.  Rep 357 

Clark  v.  Wilson 30  Fed.  Rep 284 

Clark  v.  Wooster 119  IT.  S 172,  374,  413,  441 

Clodfelter  ?.  Cox 1  Sneed  (Tenn.) 213 

Clough  v.  Mfg.  Co 106  U.  8 54,  279 

Clow  e.  Baker 36  Fed.  Rep. 247,  467 

Cluett  v.  Clafflin 30  Fed.  Rep 25,  61 

Clum  v.  Brewer 2  Curtis. . .  .201,  226,  489,  494,  495,  496 

Coburnfl.  Clark 15  Fed.  Rep 495 

Cochrane  v.   Badische    Anilin    & 

SodaFabrik Ill  U.  S 59 

Cochrane  v.  Deener 94  U.  S . .  55,  261,  269,  274,  295,  443,  480 

Cochrane  t>.  Waterman 1  McArthur's  Patent  Cases.  .16,  33,  107 

Coes  v.  Collins  Co 9  Fed.  Rep 143 

Coffin  v.  Ogden 18  Wallace.- 58,  60 

Cohausey  Mfg.  Co.  v.  Wharton. ...  28  Fed.  Rep 60 

Cohu  t>.  Rubber  Co 3  Bann.  &  Ard 237 

Coleman  «.'  Grubb 23  Penn.  State 211 

Colgate  v.  Compagnie  Francaise 23  Fed.  Rep 876 

Colgate  v.  Mfg.  Co 28  Fed.  Rep 417 

Colgate  v.  Telegraph  Co 4  Bann.  &  Ard 500,  501 

Colgate  v.  Telegraph  Co 17  Blatch 124 

Colgate  v.  Telegraph  Co 19  Fed.  Rep 473 

Collar  Co.  v.  Van  Dusen 23  Wallace. . .  .171 


XXXVU1  TABLE   OF   CITED    CASES. 

Names  of  Cases.  Where  reported.  Pages  in  this  book. 

Collignon  0.  Hayes 8  Fed.  Rep 499,  500 

Collins  0.  Hathaway Olcott's  Reports 407 

Collins  v.  Peebles 2  Fisher 364 

Colt  0.  Arms  Co 1  Fisher 262 

Colt  v.  Young 2  Blatch. 202,  501 

Combined  Patents  Can  Co.  0.  Lloyd..  11  Fed.  Rep 31 

Commercial  Mfg.  Co.  0.  Canning 

Co 27  Fed.  Rep 127 

Commissioners  of  Hamilton  Co.  v. 

Mighels .7  Ohio  State 313 

.  Commissioner  of  Patents  0.  White- 
ley 4  Wallace 97,  98,  190 

Comstock0.  Sandusky  Seat  Co 3  Bann.  &Ard 77,  82 

Cone  0.  Morgan  Envelope  Co 4  Bann.  &  Ard 36 

Conover  0.  Mevs 3  Fisher 488,  500 

Conover  0.  Mevs 11  Blatch 531 

Conover  0.  Rapp 4  Fisher 279,  377 

Conover  0.  Roach 4  Fisher. 63,  273,  279,  377 

Consolidated    Apparatus    Co.    0. 

Brewing  Co 28  Fed.  Rep 488 

Consolidated    Apparatus    Co.    -0. 

Woerle 29  Fed.  Rep 387 

Consolidated  Electric  Light  Co.  0. 

Edison  Electric  Light  Co 25  Fed.  Rep 131,  206 

Consolidated  Electric  Light  Co.  0. 

Electric  Light  Co 20  Fed.  Rep 324 

Consolidated  Electric  Light  Co.  0. 

McKeesport  Light  Co 34  Fed.  Rep. , 131 

Consolidated    Fruit    Jar    Co.    0. 

Stamping  Co 27  Fed.  Rep 70,  73 

Consolidated    Fruit    Jar    Co.    0. 

Stamping  Co 28  Fed.  Rep 25 

Consolidated  Fruit  Jar  Co.  0.  Whit- 
ney  1  Bann.  &  Ard 239,  503 

Consolidated  Fruit  Jar  Co.  0.  Whit- 
ney  2  Bann.  &  Ard 218,  234,  358 

Consolidated    Fruit    Jar    Co.    0. 

Wright ,..94U.  S 69,  71,  74,  75,  76,  114,  502 

Consolidated    Middlings    Purifier 

Co.  0.  Guilder. 9  Fed.  Rep 359 

Consolidated  Oil  Well  Packer  Co. 

0.  Eaton 12  Fed.  Rep 308 

Consolidated  Purifier  Co.  0.  Wolf. .  .28  Fed.  Rep 236,  238 

Consolidated  Valve  Co.  0.  Valve  Co. 113  U.  S 135 

Continental  Windmill  Co.  0.  Em- 
pire Windmill  Co 8  Blatch. . . . .' 213,  214,  217,  234 


TABLE   OF   CITED   CASES.  XXXIX 

Names  of  Cases.  Where  reported.  Pages  in  this  book. 

Cook®.  Bidwell 8  Fed.  Rep 217 

Coont;.  Wilson 113  U.  S 168,  176,  180 

Cooper  v.  Mattheys 3  Peuu.  Law  Journal  Reports.. 485,  496 

Corbiu  Cabinet  Lock  Co.  v.  Eagle 

Lock  Co 37  Fed.  Rep ....     26 

Cornely  »  Marckwald 32  Fed.  Rep 416 

Corning  v.  Burden 15  Howard 5,  137,  147,  394 

Corning  v.  Troy  Iron  &  Nail  Fac- 
tory  15  Howard 478 

Corn  Planter  Patent 23  Wallace..  23,  48,  58,  88,  141,  170, 

187,  274 

Cote  v.  Moffltt 15  Fed.  Rep 188,  398 

Cotter  v.  Copper  Co 13  Fed.  Rep 262 

Cottier  v.  Stimson 18  Fed.  Rep 333 

Cottle  v.  Krementz 25  Fed.  Rep 439 

Cottle  v.  Krenaeutz 31  Fed.  Rep 59 

Coupe  v.  Wetherhead 37  Fed.  Rep 470 

Covert  v.  Curtis 25  Fed.  Rep 489 

Cowing  v.  Rumsey 8  Blatch 332,  399,  412,  424 

Cox  «,  Griggs 1  Bissell 377 

Crary  v.  Smith 2  Comstock  (N.  Y.) 504 

Craver  v.  Weyhrich 31  Fed.  Rep 71,  72 

Crawford  v.  Heysinger 123  U.  S 143 

Creamer  v.  Bowers 30  Fed.  Rep 441 

Creamer  v.  Bowers 35  Fed.  Rep 419,420,  421,  425,  521 

Crescent  Brewing  Co.  v.  Gottfried. .  .128  U.  S 27,  142 

Crompton  v.  Belknap  Mills 3  Fisher •. 91,  199 

Cromptou  v.  Kuowles 7  Fed.  Rep 39 

Cross  v.  Mackiunou 11  Fed.  Rep 274 

Crouch  v.  Roemer 103  U.  S 33 

Crowell  V.  Parmeter 3  Bann.  &  Ard 499 

Cummings  v.  Plaster  Co 6  Blatch 406 

Curran  v.  Arkansas 15  Howard 324 

Curran  v.  Burdsall 20  Fed.  Rep 242 

Currau  v.  Car  Co 32  Fed.  Rep 817,  435 

Cutter  Co.  v.  Sheldon 10  Blatch 214 

Cutting  ®.  Myers 4  Washington 336,  339 

Dale  v.  Rosevelt 1  Paige  (N.  Y.) 858,  467 

Dale  Mfg.  Co.  v.  Hyatt 125  U.  S 408,  477 

Dalton  v.  Nelson 13  Blatch 28 

Dare  «.  Boylston 6  Fed.  Rep 237 

Davis  v.  Fredericks 19  Fed.  Rep  26 

Davis  v.  Murphy 2  Rich.  (S.  C.) 358 

Davis®.  Palmer 2  Brock 38 

Davis  v.  Smith 19  Fed.  Rep 441 

Davidson  v.  Lewis 1  McArthur's  Patent  Cases 57 


xl  TABLE   OF  CITED   CASES. 

Names  of  Cases.  "Where  reported.  Pages  in  this  book. 

Davisou's  Ex's  ®.  Johnson 16  New  Jersey 439 

Davis  Wheel  Co.  v.  Davis  Wagon 

Co 20  Fed.  Rep 214 

Dawes  v.  Taylor 14  Reporter 443 

Day  v.  Car-Spring  Co 3  Blatch 346,  484 

Day  ».  Hartshorn 3  Fisher '. 489,  497 

Day  v.  Railroad  Co 23  Fed.  Rep 25 

Day  v.  Rubber  Co 20  Howard 397 

Day  v.  Stellman 1  Fisher 235,  397 

Day  v.  Woodworth 13  Howard 403,  423,  425 

Dean  v.  Mason 20  Howard 478,  519 

Dedekam  v.  Vose 3  Blatch 404,  408 

Dederick  v.  Agricultural  Co 26  Fed.  Rep 375 

De  Florez  v.  Raynolds 14  Blatch 91 

De  Florez  v.  Raynolds 17  Blatch 129,  130,  391,  452 

Delano  v.  Scott Gilpiu 314 

Delaware  Coal  and  Ice  Co.  v.  Packer .  5  Bann.  &  Ard 141 

Dennis  v.  Eddy 12  Blatch 406 

Densmore  v.  Tanite  Co 32  Fed.  Rep 236 

Dental  Vulcanite  Co.  v.  Davis 102  U.  S 271 

Dental  Vulcanite  Co.  v.  Van  Ant- 
werp  2  Bann.  &  Ard 413 

Dental  Vulcanite  Co.  v.  Wetherbee..2  Cliff 182,  189 

Detroit    Lubricator   Mfg.    Co.   v. 

Renchard 9  Fed.  Rep 49 

Detweiler  v.  Voege 8  Fed.  Rep 232 

De  Ver  Warner  «.  Bassett 7  Fed.  Rep 493 

De  Witt®.  Mfg.  Co 5  Hun  (N.  Y.) 227 

Dexter  v.  Arnold  5  Mason 472,  476 

Dexter  «.  Arnold 2  Sumner 550 

Dezell  t>.  Odell ...   3  Hill  (N.  Y.) 241 

Dibble  v.  Augur 7  Blatch 308 

Dick  c.  Struthers 25  Fed.  Rep 310,  441 

Dick®.  Supply  Co 25  Fed.  Rep 445 

Dickerson  v.  Colgrove 100  U.  S 357 

Dickerson  v.  Machine  Co 35  Fed.  Rep 487,  488 

Dittmar  v.  Rix 1  Fed.  Rep 262 

Dobson  «.  Carpet  Co 114  U.  S 140,  525 

Dobson  v.  Dornan 118  U.  S 86,  89,  419,  525 

Dodge  0.  Card 2  Fisher 494 

Donnell  v.  Insurance  Co 2  Sumner 550 

Dorlon  v.  Guie 25  Fed.  Rep 54 

Dorsey  Rake  Co.  v.  Marsh 6  Fisher 501,  502,  510 

Dorsey  Rake  Co.  ®.  Mfg.  Co 12  Blatch 229,  233 

Doubleday  ®.  Roess 11  Fed.  Rep 31 

Doubleday  ».  Sherman 4  Fisher 517 


TABLE   OF  CITED   CASES.  xli 

Names  of  Cases.  Where  reported.  Pages  in  this  book. 

Doughty  v.  West 2  Fisher 446,  488,  490 

Doughty  v.  West 6  Blatch 249 

Dowellt).  Mitchell 105  U.  S 441 

Downtont).  Allis 9  Fed.  Rep 209.  211 

Downton  t.  Milling  Co *.....108U.  S 47 

Downtont*.  Mfg.  Co 9  Fed.  Rep 209 

Doyle  t>.  Spalding 19  Fed.  Rep 45 

Draper  ».  Hudson 1  Holmes 509 

Draper  v.  Potomska  Mills 3  Bann.  &  Ard 49 

Draper  v.  Wattles 3  Bann.  &  Ard 77,  95 

Dreskill  v.  Parish 5  McLean 406 

Dreyfus  v.  Schneider 25  Fed.  Rep 60 

Dreyfus  t.  Searle 124  U.  S 37 

Dryfoos  v.  Friedman 18  Fed.  Rep 290 

Dryfoos  v.  Wiese 124  U.  8 273 

Dubois  v.  Railroad  Co 5  Fisher 357,  358 

Dueshr.  Medlar  Co 30  Fed.  Rep 31 

Dudgeon  v.  Watson 29  Fed.  Rep 25 

Duff  t>.  Pump  Co 107  U.  S 285 

Duffey  v.  Reynolds 24  Fed.  Rep 60,  120 

Duffy  v.  Duncan 35  New  York 540 

Dun  bar  t>.  Albert  Field  Tack  Co. . .  .4  Bann.  &  Ard 22 

Dunbar  v.  Myers 94  U.  S 32,  157,  270,  283,  356 

Dunham  v.  Railroad  Co 7  Bissell 227,  234 

Duponti  v.  Mussy 4  Washington 436 

Dyert>.  Rich 1  Metcalf  (Mass.) 209,  215 

Dyson  v.  Danf  orth 4  Fisher : 387 

Eachusfl.  Bromall 115  U.  S 186,  356 

Eagle  Mfg.  Co.  «.  Bradley 35  Fed.  Rep 56 

Eagle  Mfg.  Co.  v.  Plow  Co 36  Fed.  Rep 501 

Eames  v.  Andrews 122  U.  S 47 

Eames  v.  Cook 2  Fisher 264 

Eames  v.  Godfrey -.1  Wallace. 270,  273,  283 

Earler.  Hall  22  Pickering  (Mass.) 367 

Earth  Closet  Co.  v.  Fenner 5  Fisher 505 

Eastern  Paper  Bag  Co.  t.  Nixon 35  Fed.  Rep 463,  501,  502 

Eastman  v.  Bodfish 1  Story 340 

Eastman  «.  Hinckel 5  Bann.  &  Ard 290 

Eclipse  Mfg.  Co.  v.  Adkins 36  Fed.  Rep 445 

Eclipse  Windmill  Co.  v.  Windmill 

Co 24  Fed.  Rep 239 

Edison  Electric  Light  Co.  «.  New 

Haven  Electric  Co 85  Fed.  Rep 218 

Edison  Electric  Light  Co.  v. United 

States  Electric  Lighting  Co 35  Fed.  Rep 127 


xlii  TABLE   OF   CITED    CASES. 

Names  of  Cases.  Where  reported.  Pages  in  this  book. 

Edward  Barr  Co.  v.  Sprinkler  Co. .  .32  Fed.  Rep 487,  494 

Egbert  v.  Lippmann 104  U.  S 75 

Elastic  Fabrics  Co.  <o.  Smith 100  U.  S 154,  407,  479 

Elder  v.  Bernis. 2  Metcalf  (Mass.) 329 

Elder  t>.  Bradley 2  Sneeti  (Tenn.) 366 

Electric  Signal  Co.  v.  Hall  Signal  Co.114  U.  S 208 

Elizabeth  v.  Pavement  Co 97  U.  S. .  .55,  75,  76,  78,  287,  316,  432, 

519,  520,  521,  522,  525,  526,  536,  538 

Elliott  v.  Peirsol 1  Peters 508 

Ellithorp  v.  Robertson 4  Blatch 49 

Elm  City  Co.  v.  Wooster 6  Fisher 77 

Elmendorf  v.  Taylor 10  Wheaton. 443,  456 

Ely  v.  Mfg.  Co 4  Fisher 485,  500 

Emack  v.  Kane 34  Fed.  Rep 435 

Emerson  v.  Hogg 2  Blatch 86,  95 

Emerson  ».  Hubbard 34  Fed.  Rep 457 

Emerson  v.  Lippert 31  Fed.  Rep 126 

Emerson  v.  Sirnm .6  Fisher 413,  424 

Emigh  v.  Chamberlin 2  Fisher 238 

Emigh  v.  Railroad  Co 6  Fed.  Rep.415,  428,  521,  530,  533,  535 

Enterprise  Mfg.  Co.  v.  Sargent 28  Fed.  Rep 33 

Erie  Railway  Co.  v.  Ramsay 45  New  York 508 

Eunson  v.  Dodge 18  Wallace 203 

Eureka  Co.  v.  Bailey  Co 11  Wallace 173 

Evans  •».  Eaton 3  Wheaton 146,  346,  349,  384 

Evans  v.  Eaton 7  Wheaton 410 

Evans  v.  Hettich 7  Wheaton 396 

Evans  ».  Jordan 9  Cranch 194 

Everest  e.  Oil  Co 20  Fed.  Rep 60 

Everest  v.  Oil  Co 22  Fed.  Rep 470 

Everett  v.  Thatcher 3  Baun.  &  Ard 492 

Every  «.  Burt 15  Fed.  Rep 279 

Ewart  Mfg.  Co.  v.  Iron  Co 31  Fed.  Rep 285 

Ex  parte  Herr 41  Off.  Gaz 7 

Ex  parte  Robinson 2  Bissell 119 

Ex  parte  Young 46  Off .  Gaz 7 

Falley  «.  Giles 29  Indiana 211 

Farley  v.  Steam  Gauge  Co 1  McArthur's  Patent  Cases 56 

Farmer's  Mfg.  Co.  v.  Corn-Planter 

Co 128  U.  S 181 

Farrington  v.  Detroit 4  Fisher 204 

Farrington  v.  Gregory 4  Fisher 234 

Faulks  v.  Kamp 17  Blatch 215 

Fay  v.  Allen 30  Fed.  Rep 525 

Fay  v.  Cordesman 109  U.  S 138,  270 


TABLE   OF  CITED   CASES.  xliii 

Names  of  Cases.  Where  reported.  Pages  in  this  book. 

Felix  v.  Sharnweber 125  U.  S 408 

Fermentation  Co.  «.  Maus 122  U.  S 7 

Ferrett  v.  Atwill 1  Blatch 255,  256 

Fetert).  Newhall 17  Fed.  Rep 209 

Field  «.  De  Comeau 116  U.  S 264 

Filley  t>.  Stove  Co 30  Fed.  Rep 158,  269 

Fire  Extinguisher  Case 21  Fed.  Rep 194 

Fish  «.  Manning 31  Fed.  Rep 256 

Fisher  v.  Amador  Mine 25  Fed.  Rep 242 

Fischer  v.  Hayes 6  Fed.  Rep 339,  375.  456 

Fischer  v.  Hayes 16  Fed.  Rep 546,  547 

Fischer  B.  Neil 6  Fed.  Rep 207 

Fisk,  Clark  &  Flagg  v.  Hollander. .  .MacArthur  and  Mackey 140,  208 

Fitch  v.  Bragg 16  Fed.  Rep 419 

Flower  v.  Detroit 127  U.  S 184 

Flower  0.  Rayner 5  Fed.  Rep 177 

Foote  v.  Silsby 1  Blatch 350 

Foote«.  Stein 35  Fed.  Rep 471 

Forbes  t>.  Stove  Co. : 2  Cliff 1 90 

Forbush  v.  Bradford 1  Fisher 497,  501 

Forbush  n.  Cook 2  Fisher 31 

Forehand  t.  Porter 15  Fed.  Rep 441 

Forncrook*.  Root 127  U.  S 273 

Forschner  v.  Baumgarten 26  Fed.  Rep 27 

FOBS*.  Herbert 1  Bissell 262,  272 

Foster  v.  Crossin 23  Fed.  Rep 52,  487,  494 

Foster  v.  Lindsay 3  Dillon  246 

Foster  v.  Moore 1  Curtis 490,  503 

Fraimt).  Iron  Co 27  Fed.  Rep 497 

Frankfort  Process  Co.  «.  Pepper 26  Fed.  Rep. . .  .• 311 

Freese  v.  Swartchild 35  Fed.  Rep 376 

French  «.  Carter    25  Fed.  Rep 25 

French  t.  Edwards 21  Wallace 401 

French  v.  Rogers 1  Fisher 129,  183 

Fry  t>.  Quinlan 13  Blatch 99 

Fry  v.  Yeaton 1  Cranch's  Circuit  Court  Reports.  405 

Fuller*.  Yentzer 94  U.  S 143,  270,  283 

Gaget>.  Herring 107  U.  S 188,  898 

Gage  v.  Kellogg 26  Fed.  Rep 471 

Gaines  v.  Fuentes 92  U.  S 298,  300 

Gallahue  v.  Butterfield 10  Blatch 187 

Gamewell  Fire  Alarm  Telegraph 

Co.  «.  Brooklyn 14  Fed.  Rep 230,  311 

Gamewell  Fire  Alarm  Telegraph 

Co.  t>.  Chillicothe 7  Fed.  Rep 824 


Xliv  TABLE    OF   CITED    CASES. 

Names  of  Cases.  Where  reported,  Pages  in  this  book. 

Gandya.  Marble 122  U.  S... 100,  101 

Gardner  c.  Herz 118  U.  S '. 21,  27 

Gardner  «.  Howe 2  Cliff 125 

Garretson  v.  Clark 15  Blatch 525 

Garretson  v.  Clark 4  Bann.  &  Ard 542 

Garretson  v.  Clark Ill  TJ.  S 525 

Gay  v.  Cornell 1  Blatch 99,  206 

Gayler  «.  Wilder 10  Howard.  .51,  58,  206,  207,  208,  219, 

229,  311 

Gear  t>.  Fitch 3  Bann.  &  Ard 213 

Gear  <e.  Grosvenor 1  Holmes 200 

Geist>.  Kimber 36  Fed.  Rep 317 

Gelpcke  v.  Dubuque 1  Wallace 339 

Giant  Powder  Co.  v.  Nitro  Powder 

Co 19  Fed.  Rep 169,  183,  440 

Giant  Powder  Co.  v.  Vigorit  Pow- 
der Co 6  Sawyer 177 

Gibbs  v.  Hoefner 19  Fed.  Rep 64,  239 

Gibson  v.  Cook 2  Blatch • 211,  213 

Gibson  v.  Gifford 1  Blatch 195 

Gibson  «.  Harris 1  Blatch 183 

Gibson  v.  Van  Dresar 1  Blatch 487,  500,  502 

Gilbert  &  Barker  Mfg.  Co.  v.  Bussing  12  Blatch 242,  503 

Gill  «.  Wells .22  Wallace 88,  186,  187,  270,  277 

Gillespie  ®.  Cummings 3  Sawyer 324 

Gilmore  v.  Golay 3  Fisher 248 

Gilpin  «.  Consequa 3  Washington 425 

Glaenzer  v.  Wieberer 33  Fed.  Rep , 497 

Gloucester  Isinglass  Co.  v.  Brooks . .  19  Fed.  Rep 105 

Gloucester  Isinglass  Co.  v.  Le  Page. 30  Fed.  Rep .37,  358 

Glue  Co.  «.  Upton 97  U.  S 29 

Godfrey  v.  Eames 1  Wallace 108 

Gold  and  Silver  Ore  Co.  v.  Disin- 
tegrating Ore  Co 6  Blatch 243 

Gold  and  Stock  Telegraph  Co.  v. 

Pearce 19  Fed.  Rep 515 

Gold  and  Stock  Telegraph  Co.  ®. 

Telegram  Co 23  Fed.  Rep 126,  129 

Goldsmith  v.  Collar  Co 18  Blatch 310 

Goodyear®.  Allyn 6  Blatch 391,  433,  452,  497 

Goodyear  D.  Berry 8  Fisher 488,  496 

Goodyear  v.  Bishop 4  Blatch 312 

Goodyear  v.  Bishop 2  Fisher 412,  419,  425 

Goodyear  v.  Cary 4  Blatch 212 

Goodyear  v.  Hills. 3  Fisher 503 

Goodyear  .v,  Jttullihen 3  Fisher 189 


TABLE   OP  CITED  CASES.  xl? 

Names  of  Cases.  Where  reported.  Pages  in  this  book. 

Goodyear  v.  McBurney 3  Blatch 311 

Goodyear  v.  Mullee 5  Blatch 314,  488,  516 

Goodyear  v.  Phelps 3  Blatch 319 

Goodyear  v.  Railroad  Co 1  Fisher 219,  488 

Goodyear  t>.  Beverly  Rubber  Co 1  Cliff 203 

Goodyear  v.  Congress  Rubber  Co. .  .3  Blatch 239,  499 

Goodyear  t>.  Rust 3  Fisher 488 

Goodyear  Dental  Vulcanite  Co.  v. 

Davis 3  Bann.  &  Ard 462 

Goodyear  Dental  Vulcanite  Co.  v. 

Evans 3  Fisher 488 

Goodyear  Dental  Vulcanite  Co.  «. 

Folsora 5  Bann.  &Ard 518 

Goodyear  Dental  Vulcanite  Co.  v. 

Willis IBann.&Ard 464 

Gordon  t>.  Anthony 16  Blatch 308,  332 

Gordon  v.  Harvester  Works 23  Fed.  Rep 317 

Gorhamr.  White 14  Wallace 290 

Goss  v.  Cameron 14  Fed.  Rep 6 

Gottfried  n.  Crescent  Brewing  Co. .  .22  Fed.  Rep 416 

Gottfried  v.  Crescent  Brewing  Co. . .  13  Fed.  Rep 441 

Gottfried  v.  Pbilip  Best  Brewing  Co.5  Bann.  &  Ard 387 

Gottfried  v.  Miller 104  U.  S 209 

Gottfried  v.  Moerlein 14  Fed.  Rep 441 

Gould  v.  Rees 15  Wallace 276 

Gould  v.  Spicer 15  Fed.  Rep 188,  398 

Gould's  Mfg.  Co.  v.  Cowing 12  Blatch 525 

Graham  «.  Johnston 21  Fed.  Rep 73 

Graham  v.  Mason 1  Holmes 520,  526 

Graham  v.  Mason 5  Fisher 279 

Graham  «.  Mfg.  Co 11  Fed.  Rep 77,  141,  429 

Graham  t>.  Mfg.  Co 24  Fed.  Rep 412,  413 

Graham  v.  McCormick 5  Bann.  &  Ard 77,  109,  141 

Graham  v.  Teter 25  Fed.  Rep 100 

Gramme  Electrical  Co.  «.  Electric 

Co 17  Fed.  Rep 126,  127 

Grant  v.  Raymond 6  Peters. 80.  Ill,  139, 162, 170, 182, 192, 

201,  346,  398 

Gray  t.  Halkyard  . .' 28  Fed.  Rep 468 

Gray  v.  James 1  Peters'  Circuit  Court  Reports. . .  81, 

335,  387 

Gray  n.  Railroad  Co 1  Woolworth 513,  514 

Green  v.  Austin 22  Off.  Gaz 314 

Green  v.  Barney 19  Fed.  Rep 444 

Green  v.  Biddle 8  Wheaton 115 

Green  r.  French 4  Bann.  &  Ard 444.  488,499.  600 


TABLE   OF   CITED   CASES. 

Names  of  Cases.  Where  reported.  Pages  in  this  book. 

Green  ®.  French 11  Fed.  Rep 60,  61 

Green  <o.  Gardner 22  Off.  Gaz 314 

Greene  v.  Bishop 1  Cliff 549,  550 

Greenleaf  v.  Mfg.  Co 17  Blatch 416 

Greenwood  v.  Bracher 1  Fed.  Rep 494 

Grier  v.  Wilt 120  U.  S 357 

Griffiths  Segar 29  Fed.  Rep 324 

Griggs  v.  Gear 3  Gilinan  (Illinois) 474 

Grover  &  Baker  Sewing  Machine 

Co.  v.  Williams .  .2  Fisher 484,  488,  490,  491 

Guidet  v.  Brooklyn 105  U.  S 29 

Guidet  v.  Palmer 10  Blatch 502 

Guille  v.  Swan 19  Johnson  (N.  Y.) 315 

Gunn  v.  Savage 30  Fed.  Rep 142 

Guyon  v.  Serrell 1  Blatch 423 

Hailese.  Stove  Co 123  U.  S 149,  150,  152,  185 

Hailes  v.  Van  Wormer 20  Wallace  30 

Hale  &  Kilbourn  Mfg.  Co.  v.  Hart- 
ford Mattress  Co 36  Fed.  Rep 37 

Hall  v.  Macneal. 107  U.  S 35,  77 

Hall  v.  Stern  20  Fed.  Rep 419 

Hall  v.  Wiles 2  Blatch 153,  422 

Halstead  v.  Manning 34  Fed.  Rep 304 

Hamilton  v.  Kingsbury 15  Blatch 233,  238 

Hamilton  v.  Kingsbury 17  Blatch 229,  233,  234 

Hamilton  v.  Rollins 3  Bann.  &  Ard 210 

Hamilton  v.  Simons 5  Bissell 516 

Hammacher  v.  Wilson 26  Fed.  Rep 236,  303 

Hammacher  v.  Wilson 32  Fed.  Rep 550 

Hammerschlag  v.  Garrett 10  Fed.  Rep 262 

Hammerschlag  v.  Scamnoi 7  Fed.  Rep 47 

Hammerschlag  Mfg.  Co.  v.  Judd. .  .28  Fed.  Rep 495 

Hammerschlag  Mfg.  Co.  «.  Spalding.35  Fed.  Rep 464 

Hammond's  Appeal 2  Off.  Gaz 98 

Hammond  v.  Hunt 4  Bann.  &  Ard 311 

Hammond  v.  Organ  Co 92  U.  S 239 

Hancock  Inspirator  Co.  v.  Jenks 21  Fed.  Rep 89,  91 

Hancock  Inspirator  Co.  v.  Regester.35  Fed.  Rep...   .'. 464 

Hanger  v.  Abbott 6  Wallace 323 

Hapgood  v.  Hewitt 11  Fed.  Rep 207 

Hapgood  v.  Hewitt 119  U.  S 207,  238 

Hapgood  v.  Rosenstock 23  Fed.  Rep 218 

Harding  v.  Handy 11  Wheaton 548,  550 

Harmon  v.  Bird 22  Wendell  (N.  Y.) 208 

Harper  v.  Butler 2  Peters 310 


TABLE   OF  CITED  CASES. 

Names  of  Cases.  Where  reported.  Pages  in  tills  book. 

Harris  t>.  Allen 15  Fed.  Rep 272 

Harris  t>.  Clark 10  Ohio 224 

Hartell  v.  Tilghman 99  U.  S 302 

Hartshorn  t>.  Barrel  Co 119  U.  S 50,  143,  180,  181 

Hartshorn  «.  Day 19  Howard 210 

Hartshorn  v.  Roller  Co 18  Fed.  Rep 181 

Harwood  t>.  Mfg.  Co 3  Fisher 279 

Haselden  v.  Ogden .  .3  Fisher 422 

Hatch®.  Adams 22  Fed.  Rep 220 

Hatch®.  Hall 22  Fed.  Rep.  30  Fed.  Rep 220 

Hatch  v.  Moffitt 15  Fed.  Rep 6,  27 

Hathaway  «.  Roach 2  Woodbury  &  Minot 404,  405,  406 

Hat-Sweat    Mfg.    Co.    v.   Sewing 

Machine  Co 32  Fed.  Rep 498 

Hasselman  v.  Gaar 29  Fed.  Rep 25 

Hausknecht  v.  Claypool 1  Black 225,  323,  365,  371,  409 

Havemeyer  v.  Randall 21  Fed.  Rep 188,  384 

Havves  «.  Antisdel 2  Bann.  &  Ard 60 

Hawes  v.  Cook 5  Off.  Gaz 463 

Hayden  V.  Oriental  Mills 15  Fed.  Rep 323,  364 

Hayes  t>.  Bickelhoupt 21  Fed.  Rep 31 

Hayes  v.  Bickelhoupt 23  Fed.  Rep 825,  376 

Hayes  v.  Dayton 8  Fed.  Rep 324 

Hayes  v.  Leton 5  Fed.  Rep 493 

Hayward  v.  Andrews 106  U.  8 229,  308,  442 

Hay  ward  v.  Andrews 12  Fed.  Rep 210 

Hazelip  v.  Richardson 10  Off.  Gaz 98 

Heald  v.  Rice 104  U.  S 84 

Heath  v.  Hildreth 1  Me  Arthur's  Patent  Cases.  .21,  56, 107 

Hebert  v.  Joly 5  Louisiana 434 

Heckers  v.  Fowler 2  Wallace 370,  371,  402,  408 

Henderson  t>.  Stove  Co 2  Bann.  &  Ard 143 

Hendrie®.  Sayles 98  U.  S 131,  206,  212,  218,  332 

Hendryx  v.  Fitzpatrick 19  Fed.  Rep 517 

Hendy  t).  Iron  Works 127  U.  S 31,  37,  445 

Henry  v.  Soap-Stone  Stove  Co 5  Bann.  &  Ard 77,  95 

Henry  v.  Soap  Stone  Stove  Co 2  Bann.  &  Ard 308 

Henry  v.  Tool  Co 8  Bann.  &  Ard 127 

Herbert  v.  Butler 97  U.  8 408 

Herman  «.  Herman 29  Fed.  Rep 240 

Herring  v.  Gage 3  Bann.  &  Ard  520,  521 

Herring  v.  Nelson 3  Bann.  &  Ard 187 

Hewitt  v.  Swift 8  Allen  (Mass.) 321 

Hiatt  «.  Twomey 1  Devereaux  &  Battle's  Equity  Cases 

(N.  C.) 215 

Hicks  v.  Kelsey 18  Wallace 27 


xlviii  TABLE   OF   CITED    CASES. 

Names  of  Cases.  Where  reported.  Pages  in  this  book. 

Higby  v.  Rubber  Co  18  Fed.  Rep 515 

Hill  0.  Biddle 27  Fed.  Rep  38,  155 

Hill  v.  Dunklee 1  McArthur's  Patent  Cases 57 

Hill  v.  Epley. 31  Penn.  State 341 

Hill*.  Smith 32  Fed.  Rep 474 

Hill  0.  Thuerner 13  Indiana 208 

Hill  v.  Whitcomb 1  Holmes 229 

Himeley  0.  Rose 5  Cranch 478 

Hipp  v.  Babin 19  Howard 305,  442,  479 

Hitchcock  v.  Tremaine 9  Blatch 472 

Hitchcock  v.  Tremaine 4  Fisher 143 

Hobbie.0.  Smith 27  Fed.  Rep 60,  412,  419 

Hockholzer  ®.  Eager 2  Sawyer .499,  500 

Hodge  v.  North  Missouri  Railroad 

Co 1  Dillon 223 

Hodge®.  Hudson  River  Railroad  Co. 6  Blatch. .  .204.  304,  309,  486,  498,  501 

Hoe  v.  Boston  Daily  Advertiser 14  Fed.  Rep 502 

Hoe  0.  Kuhler 12  Fed.  Rep 91 

Hoe  0.  Knapp 27  Fed.  Rep 138,  502 

Hoeltge  0.  Hoeller 2  Bond 245 

Hoffheins  0.  Brandt 3  Fisher 190 

Hogg  0.  Emerson 6  Howard 140 

Hogg  0.  Emerson 11  Howard 142,  399 

Hohorst  0.  Howard 87  Fed.  Rep 441 

Holbrook  0.  Small 3  Bann.  &  Ard 425 

Holden  0.  Curtis. 2  New  Hampshire 208,  213 

Holiday  0.  Mattheson 24  Fed.  Rep 232 

Holliday  0.  Pickhardt 12  Fed.  Rep 494 

Holliday  v.  Pickhardt 29  Fed.  Rep 146,  244 

Hollister  0.  Benedict  Mfg.  Co 113  U.  S 21,  22,  24,  38 

Holmes  Protective  Co.  0.  Alarm  Co. 22  Fed.  Rep 127 

Holmes  Protective  Co.  0.  Alarm  Co. 31  Fed.  Rep 497 

Hormau  Patent  Mfg  Co.  0.  Rail- 
road Co 15  Blatch 324 

Hoskin  0.  Fisher 125  U.  S 180,  184,  389 

Hotchkiss  0.  Greenwood 11  Howard 27 

Hotchkiss  0.  Greenwood 4  McLean 43 

Hotchkiss  0.  Oliver 5  Denio  (N.  Y.) 352 

Houston  0.  Moore 5  Wheaton 295,  298,  299 

Howe  Machine  Co.  0.  Needle  Co. .  .21  Fed.  Rep 37 

Howe  0.  Morton 1  Fisher 495,  501,  503 

Howe  0.  Russell 36  Maine 550 

Howe  0.  Williams 2  Cliff 262 

Howard  0.  Mast 33  Fed.  Rep 515 

Howard  v.  Plow  Works 35  Fed.  Rep 60 

Howes  0.  McNeal ...3  Bann.  &  Ard 72,  108 


TABLE   OF  CITED   CASES.  xlix 

Names  of  Cases.  Where  reported.  Pages  in  this  book. 

Howes  v.  McNeal 5  Baun.  &  Ard 48 

Howes  v.  Nute 4  Cliff 332,  424 

Hubbell  v.  De  Land 14  Fed  Rep 437 

Hubel  0.  Dick 28  Fed.  Rep 56,  244,  274,  285 

Hubel  «.  Tucker 24  Fed.  Rep. . .   105 

Huber  v.  Sanitary  Depot 34  Fed.  Rep 811,  325 

Hudson  v.  Draper 4  Fisher 377 

Hughes  v.  Blake ..6  Wheaton 439,  454 

HulU.  Commissioner  of  Patents.  ..7  Off.  Gaz 96,  101 

Hull  0.  Commissioner  of  Patents. .  .8  Off.  Gaz 96,  101 

Humiston  v.  Stainthorp 2  Wallace 469 

Humphreys  v.  Douglass 10  Vermont , 313 

Hunnicutt  v.  Peyton 102  U.  S 411 

Huntington  v.  Heel  Plate  Co 33  Fed.  Rep 505 

Hurd  v.  Snow 35  Fed.  Rep 30 

Hurlbut  v.  Schillinger 130  U.  S 527 

Hussey  t>.  Whiteley 2  Fisher 505 

Idet>.  Engine  Co 31  Fed.  Rep 435,  511 

Imhaeusere.  Buerk 101  U.  S 53,274,  278 

Imlay  v.  Railroad  Co 4  Blatch 832 

India-Rubber  Comb  Co.  v.  Phelps. .  .4  Fisher 472 

Indianapolis  &  St.  Louis  Railroad 

Co.  v.  Horst 93  U.  S 411 

Ingalls  v.  Tice 14  Fed.  Rep 311 

Ingersoll  v.  Jewett 16  Blatch 858 

Ingersoll  v.  Musgrove 3  Bann.  &  Ard 420 

In  re  Corbin  and  Martlett 1  McArthur's  Patent  Cases 64 

In  re  Hatchman 3  Mackey 170 

In  re  Hebard 1  McArthur's  Patent  Cases 34,  273 

In  re  Hemiup 3  Paige  (N.  Y.) 549,  550 

In  re  Kemper 1  McArthur's  Patent  Cases 2 

In  re  Maynard 1  McArthur's  Patent  Cases 27 

In  re  Seeley 1  McArthur's  Patent  Cases 21 

Insurance  Co.  v.  Eggleston 96  U.  S 237 

Insurance  Co.  v.  Lanier 95  U.  S 408 

Insurance  Co.  «.  Sea 21  Wallace 400,  401 

International  Crown  Co.  ®.  Rich- 
mond   30  Fed.  Rep 25,  74,  108 

Iowa    Barbed   Steel  Wire  Co.  v. 

Barbed  Wire  Co 30  Fed.  Rep 319,  516 

Irwin  v.  McRoberts 4  Bann.  &  Ard 502 

Isaacs  v.  Cooper 4  Washington 491 

Ives  v.  Hamilton 92  U.  S 286 

Jacob  v.  United  States 1  Brockenbrough 255,  256 


1  TABLE   OF  CITED  CASES. 

Names  of  Cases.  Where  reported.  Pages  in  this  book. 

Jacobs  v.  Baker 7  Wallace 17 

Jacobs  v.  Hamilton  County 4  Fisher 812 

James  «.  Campbell 104  U.  S 114,  120,  175,  306,  389 

Jenkins  t>.  Greenwald 2  Fisher 332,  496,  510,  522 

Jenkins  v.  Stetson 32  Fed.  Rep 170,  187 

Jennings  c.  Dolan 29  Fed.  Rep 315,  316,  547 

Jennings  «.  Kibbe 10  Fed.  Rep 376 

Jennings  v.  Kibbe 24  Fed.  Rep 60 

Jennings  v.  Lowenstine .31  Fed.  Rep 50 

Jennisons  v.  Leonard. ,   21  Wallace 401 

Johnsen  v.  Fassman 1  Woods 72 

Johnson  v.  McCullough 4  Fisher 49,  199 

Johnson  t>.  Railroad  Co 105  U.  S 180,  187 

Johnson  v.  Railroad  Co 32  Fed.  Rep 54 

Johnson  v.  Root 1  Fisher 377 

Johnson  ».  Root .'2  Cliff 276,  399 

Jolliffe  v.  Collins .21  Missouri 217 

Jones  ».  Bank 5  How.  (Miss.) 505 

Jones  v.  Barker 11  Fed.  Rep 75,  145 

Jones  «.  Buckell 104  U.  S 410 

Jones  ».  Morehead 1  Wallace 478 

Jones  v.  Wetherell 1  McArthur's  Patent  Cases 107 

Jordan  ®.  Dobson  2  Abbott's  U.  S.  Reports 187,  194, 

201,  509 

Judson  v.  Bradford 3  Bann.  &  Ard 414,  418 

Judsou  v.  Cook 11  Barbour(N.  Y.) 314 

Judson  10.  Cope 1  Fisher 46 

J.  L.  Mott  Iron  Works  v.  Cassidy. .  .31  Fed.  Rep 27 

J.  L.  Mott  Iron  Works  v.  Skirm  . .  .30  Fed.  Rep 31 

Kaaps  v.  Hartung 23  Fed.  Rep 36 

Kearney  v.  Railroad  Co 27  Fed.  Rep 208 

Kearney  v.  Railroad  Co 32  Fed.  Rep 56 

Kendall  v.  Winsor 21  Howard 69,  70,  82,  117.  121 

Kendrick  «.  Emmons 2  Bann.  &  Ard 126,  135 

Kendrick  ®.  Emmons 3  Bann.  &  Ard 272 

Kendrick  v.  United  States 1  Gallison 256 

Kennedy  e.  Hazelton 128  U.  S 218 

Keplinger  v.  De  Young 10  Wheaton , 315 

Kerosene  Lamp  Heater  Co.  v.  Fisher. 5  Bann.  &  Ard 543 

Kerosene  Lamp  Heater  Co  .«.  Littell.3  Banii.  &  Ard 187 

Ketchum  Harvester  Co.  v.  John- 
son Harvester  Co 8  Fed.  Rep 420 

Keyesfl.  Grant 118  U.  S 397 

Keyes  v.  Refining  Co 31  Fed.  Rep 493,  497,  499 

Keystone  Bridge  Co.  v.  Iron  Co. . .  .95  U.  S 142,  145 


TABLE   OF  CITED   CASES.  ll 

Names  of  Cases.  Where  reported.  Pages  in  this  book. 

fl.  Horry 28  Fed.  Rep 435 

fl.  Horry 33  Fed.  Rep 25 

Kidd  t>.  Ransom 35  Fed.  Rep 463 

King  t.  Cement  Co 6  Fisher 279 

Kingfl.  Frostel 4  Bann.  &  Ard. 24 

King  v.  Gallun 109  U.  S 37 

Kinsman  v.  Parkhurst 18  Howard 478 

Kirby  v.  Armstrong 19  Off.  Gaz 525 

Kirby  v.  Mfg.  Co 10  Blatch 186 

Kirby  Bung  Mfg.  Co.  v.  White 1  McCrary 488,  495,  501,  503 

Kirk  «.  Commissioner  of  Patents. .  .37  Off.  Gaz 100,  101,  109 

Kirk  v.  Du  Bois 28  Fed.  Rep 441,  458 

Kirkt).  Du  Bois 33  Fed.  Rep 105 

Kittle  v.  De  Graff 30  Fed.  Rep 441 

Kittle  t.  Hall 29  Fed.  Rep 54,221,  443 

Kittle*  Hall 30  Fed.  Rep 155 

Kittle  e.  Rogers 33  Fed.  Rep 441 

Klein  v.  Russell 19  Wallace 66,  145,  186,  374,  397 

Knapp  t.  Shaw 15  Fed  Rep 467 

Knight  v.  Railroad  Co Taney's  Circuit  Ct.  Decisions.  179, 186 

Knox  T.  Loweree 1  Bann.  &  Ard 72 

Knox  ».  Quicksilver  Mining  Co 6  Sawyer 269,  521,  533,  545 

Koalatype  Co.  v.  Hoke 30  Fed.  Rep. 210,  445 

Konoldfl.  Klein 3  Bann.  &  Ard 374 

Korn  «.  Wiebusch 33  Fed.  Rep 439,  455 

Krausc.  Fitzpatrick 34  Fed.  Rep 52 

La  Baw  t.  Hawkins 2  Bann.  &  Ard 412,  417,  525,  526 

La  Rue  t.  Electric  Co 28  Fed.  Rep 142 

La  Rue®.  Electric  Co 31  Fed.  Rep... 67,142 

Ladd  v.  Cameron 25  Fed.  Rep  . ! 497 

Lake  Shore  R.  R.  Co.  v.  Car  Brake 

Shoe  Co 110  U.  S 141 

Landesmann  v.  Jonasson 32  Fed.  Rep 25 

Lawther  T.  Hamilton 124  U.  S 33 

Leach  v.  Chandler 18  Fed.  Rep 244 

Leake  ®.  Gilchrist 2  Devereaux  (N.  C.) 310 

Lee  t>.  Blandy 2  Fisher 375 

Leggett  c.  Avery 101  U.  S 70,  171,  389 

Le  Fever  v.  Remington 13  Fed.  Rep 270 

Leffingwell  v.  Warren 2  Black 323 

Lehnbeuter  «.  Holthaus 105  U.  S 67 

Lenox  v.  Roberts 2  Wheaton 308 

Leonard  v.  Lovell 29  Fed.  Rep  55 

Le  Roy  v.  Tatham 14  Howard 137 

Lewis  v.  Johns .  .34  California. .  .  315 


Hi  TABLE    OF   CITED    CASES. 

Names  of  Cases.                                              Where  reported.                 Pages  in  this  book. 
Lewiston  Falls  Mfg.  Co.  0.  Frank- 
lin Co 54  Maine 483 

Lexington  &  Ohio  Railroad  Co.  0. 

Applegate 8  Dana  (Ken.) 508 

Lidclle  0.  Cory  7  Blatch 515,  516 

Liggett  &  Myers  Tobacco  Co.  0. 

Miller 1  McCrary 245 

Lightner  0.  Railroad  Co 1  Lowell 238 

Ligowski  Clay  Pigeon  Co.  0.  Clay 

Bird  Co 34  Fed.  Rep.109, 141, 142,  271,  403,  445 

Ligowski  Clay  Pigeon  Co.  0.  Tar- 
get Co 35  Fed.  Rep 142 

Lillieudahl  0.  Detweller 18  Fed.  Rep 324 

Lindsay*.  Stein 10  Fed.  Rep 110 

Little  v.  Downing 37  New  Hampshire 390 

Littlefield  0.  Perry 21  Wallace. . .  .183,  208,  217,  219,  311, 

312,  429,  538 

Livingston  0.  Jones 1  Fisher 377 

Livingston  0.  Woodworth 15  Howard 519 

Locke®.  Lane  Co 35  Fed.  Rep 386 

Lockwood  v.  Cleveland 6  Fed.  Rep 245 

Lockwood  0.  Cleveland 20  Fed.  Rep 246 

Locomotive  Truck  Co.  0.  Railroad 

Co 2  Fed.  Rep 425,  428,  521,  533 

Locomotive  Truck  Co.  v.  Railway 

Co 10  Blatch 325 

Loercher  0.  Crandal 11  Fed.  Rep 273 

Loom  Co.  v.  Higgins 105  U.  S 25,  56,  134,  147,  352,  388 

Loomis  v.  Looinis 26  Vermont 213 

Lord  v.  Machine  Co 24  Fed.  Rep 442 

Lorillard  0.  Ridgway 4  Bann.  &  Ard 24 

Lovell  v.  Davis 101  U.  S 409 

Low  v.  Stove  Co 36  Fed.  Rep 36 

Lowell  Mfg.  Co.  0.  Hartford  Car- 
pet Co 2  Fisher 511 

Ludwig  0.  Stewart 32  Michigan 366 

Lull  «.  Clark 13  Fed.  Rep 142 

Lyell  v.  Miller 6  McLean 404 

Lyman  Ventilating  and  Refrigera- 
tor Co.  0.  Lalor.    1  Bann.  &  Ard 48 

Mabie0.  Haskell 2  Cliff 38,  263,  271 

Macaulay  0.  Machine  Co 9  Fed.  Rep 496 

Machine  Co.  0.  Murphy 97  U.  S 272,  277 

Mackaye  0.  Mallory 12  Fed.  Rep 210 

Magic  Ruffle  Co.  0.  Douglas 2  Fisher 64,  419 


TABLE  OF  CITED  CASES.  liii 

Names  of  Cases.  Where  reported.  Pages  in  this  book. 

Malm  t>.  Harwood 3  Barm.  &  Ard 36 

Mahnr.  Harwood 112  U.  S 176,  179,  180 

Mallory  Mfg.  Co.  «.  Hickok 20  Fed.  Rep 495 

Maltby  T.  Bobo 14  Blatch 314 

Mann's  Car  Co.  v.  Monarch  Car  Co. 34  Fed.  Rep 37,  403 

Manufacturing  Co.  «.  Cowing 105  U.  S 524,  525,  527 

Manufacturing  Co.  «.  Ladd 102  U.  S 188 

Many  t.  Jagger 1  Blatch 347 

Many  t>.  Sizer 1  Fisher 59,  292,  377,  495 

Marchand  v.  Eraken 26  Fed.  Rep 37 

Marks  t.  Corn 11  Fed.  Rep 494 

Marsh  v.  Commissioner 3  Bissell 73 

Marsh  t>.  Dodge 4  Hun  (N.  Y.) 235 

Marsh  t>.  Seymour 97  U.  S 170,  428 

Marston  v.  Sweet 66  New  York 235 

Marston  t>.  Sweet 82  New  York 235 

Marsh®.  Nichols 128  U.  S 114,  133,  521 

Martin  v.  Hunter's  Lessee 1  Wheaton 295,  297,  299 

Marvin*.  Gotshall .36  Fed.  Rep 25,  39 

Mason  v.  Graham 23  Wallace 278,  526 

Mason  v.  Railroad  Co 52  Maine .  550 

Massie's  Heirs  v.  Graham's  Adm'rs. .  3  McLean 475 

Mathews  t>.  Flower 25  Fed.  Rep 181,  388 

Matthews  v.  Machine  Co 105  U.  S 180 

Matthews  v.  Mfg.  Co 18  Blatch 325 

Matthews  v.  Mfg.  Co 19  Fed.  Rep 464 

Matthews  T.  Schoneberger 4  Fed.  Rep 141 

Matthews  v.  Skates 1  Fisher 288,  292 

Matthews  v.  Spangenberg 14  Fed.  Rep 159,  416,  467 

Matthews  v.  Spangenberg 19  Fed.  Rep 467 

Maxwell  v.  Kennedy 8  Howard 444,  451 

May  t.  Chaffee 2  Dillon 211,  227.  233 

May  v.  Le  Claire 11  Wallace 215 

May  v.  County  of  Buchanan 29  Fed.  Rep 119,  313,  360,  364 

May  v.  County  of  Cass 30  Fed.  Rep 313,  364 

May  «.  County  of  Fond  du  Lac 27  Fed.  Rep 364 

May  v.  County  of  Juneau 30  Fed.  Rep 210,  312 

May  ».  County  of  Logan 30 Fed.  Rep. 309,  310,  312,  360, 362,  364 

May  «.  County  of  Mercer 30  Fed.  Rep 312,  318,  333 

May  t.  County  of  Rails 31  Fed.  Rep 312.  364 

May  v.  County  of  Saginaw 32  Fed.  Rep 210 

Mayburry  T.  Brien 15  Peters 224 

Mayuard  v.  Pawling 5  Bann.  &  Ard 31-7 

Machesney  t.  Brown 29  Fed.  Rep 209 

MacKay  v.  Jackman 12  Fed.  Rep 6 

McArthur  v.  Supply  Co 19  Fed.  Rep 181,  187 


liy  TABLE   OF   CITED    CASES. 

Names  of  Cases.  Where  reported.  Pages  in  this  book. 

McCarty  &  Hall  Trading  Co.  v. 

Glaenzer 30  Fed.  Rep 303 

McBurney  ».  Goodyear 11  Gushing  (Mass.) 189 

McClain  v.  Ortmayer 33  Fed.  Rep 33 

McClunyfl.  Silliman 3  Peters 323 

McClure  v.  Jeffrey 8  Indiana „•  217 

McClurg  v.  Kingsland 1  Howard 8,  115,  124,  146 

McComb  v.  Brodie 1  Woods. . .  140,  141,  262,  263,  412,  414 

McComb  D.  Ernest 1  Woods 63,  262,  491 

McCormick  v.  Jerome 3  Blatch 514 

McCormick  v.  Seymour 2  Blatch 82,  373,  386 

McCormick  ®.  Seymour 3  Blatch 425 

McCormick  v.  Talcott 20  Howard 281 

McCoy  v.  Nelson 121  U.  S 443 

McCulloch  v.  Maryland 4  Wheaton 363 

McDonald  v.  Whitney 24  Fed.  Rep 60 

McFarland  v.  Spencer 23  Fed.  Rep 26 

McKay  v.  Jackman 16  Reporter 508 

McKay  «.  Wooster 2  Sawyer 220,  232 

McKeever  v.  United  States 23  Off.  Gaz 120,  240,  305,  420 

McKenna  v.  Fisk 1  Howard 334 

McKernan  v.  Kite 6  Indiana 213 

McLaughlin  v.  Railroad  Co 21  Fed.  Rep 444 

McLean  v.  Fleming 96  U.  S 444 

McMahon  v.  Tyng 14  Allen  (Mass.) 382 

McMickin  v.  Perin 18  Howard 547 

McMillan  v.  Barclay 5  Fisher 109,  241 

M'Millan  v.  Rees 5  Bann.  &  Ard 55,  141 

McMillin  e.  Conrad. 16  Fed.  Rep  501 

McMurray  c.  Mallory 11 1  U.  S 154 

McMurray  v.  Miller 16  Fed.  Rep 25 

McNab®.  Mfg.  Co 32  Fed.  Rep 25 

M'Neil  v.  Holbrook 12  Peters 323 

McNish  v.  Everson 5  Bann,  &  Ard 50 

McWilliams  v.  Webb 32  Iowa 213 

McWilliams  Mfg.  Co.  «.  Blundell. .  .11  Fed.  Rep 502 

Meers  v.  Kelly 31  Fed.  Rep 21 

Merchant  ®.  Lewis 1  Bond 403 

Merriam  v.  Drake 5  Fisher 273 

Merriam®.  Smith 11  Fed.  Rep 308 

Merrill  v.  Yeomans 94  U.  S 117 

Mershon  v.  Furnace  Co 24  Fed.  Rep 441 

Mevsfl.  Conover 11  Off.  Gaz 182,  531 

Mews'  Appeal 2  Off.  Gaz 98 

Meyer  v.  Bailey 2  Bann.  &  Ard 190 

Meyer  v.  Pritchard 1  Bann.  &  Ard 37 


TABLE   OF  CITED   CASES.  Iv 

Names  of  Cases.  Where  reported.  Pages  in  this  book. 

Michaels  v.  Roessler 34  Fed.  Rep 135 

Middletown  Tool  Co.  t>.  Judd 3  Fisher 190 

Mill  *>.  Mclntyre 6  Peters 456 

Miller  «.  Brass  Co 104  U.  S. . .  .71,  170,  178,  183,  354,  451 

Miller  v.  Force 116  U.  S 37 

Miller-Magee  Co.  v.  Carpenter 34  Fed.  Rep 294 

Milligan  t>.  Mfg.  Co 21  Fed.  Rep 216 

Milligau  &  Higgins  Glue  Co.  v. 

Upton 1  Bann.  &  Ard 188 

Minneapolis  Harvester  Works  v. 

Machine  Co 28  Fed.  Rep 488 

Millner  «.  Schofield 4  Hughes.  .^ 317 

Millner  ».  Voss 4  Hughes. ." 32 

Minturn  t>.  Seymour 4  Johnson's  Chancery  (N.  Y.) 505 

Mitchell  v.  Hawley 16  Wallace 203,  204,  229,  233 

Mitchell  v.  Tilghman 19  Wallace 372,  539 

Moat  v.  Holbein 2  Edwards'  Chancery  (N.  Y.) 507 

Moffitt  v.  Garr 1  Black 182 

Montrossz.  Mabie 30  Fed.  Rep 238 

Moody  v.  Fiske 2  Mason 262 

Moore  «.  Bare 11  Iowa 213 

Moore  v.  Marsh 7  Wallace 210,  219,  307,  310 

Morey  T.  Lockwood 8  Wallace 53,  170,286 

Morley  Machine  Co.  v.  Lancaster.  ..129  U.  S 281 

Morris  v.  Barrett 1  Bond 262 

Morris  v.  Mfg.  Co 3  Fisher 497,  502 

Morris  v.  Mfg.  Co 20  Fed.  Rep 245 

Morris  v.  McMillin 112  U.  S 21,  24 

Morris  v.  Shelbourne 4  Fisher 502 

Morton  v.  Infirmary 5  Blatch 3,  349 

Mores  v.  Knapp 35  Fed.  Rep 512 

Morss  v.  Knapp 37  Fed.  Rep 358,  516 

Mosler  Safe  &  Lock  Co  v.  Mosler. .  .22  Fed.  Rep 31 

Mowry  v.  Railway  Co 5  Fisher 494 

Mowry  v.  Whitney,  No.  1 14  Wallace 202,  249,  250 

Mowry  v.  Whitney,  No.  2 14  Wallace 9,  260,  528,  537 

Muller  v.  Ellison 27  Fed.  Rep 25 

Mumma  v.  Potomac  Co 8  Peters 324,  510 

Mundy  v.  Kendall 23  Fed.  Rep 444 

Mundyr>.  Mfg.  Co 34  Fed.  Rep 514,  515 

Munson  v.  New  York 11  Fed.  Rep 472 

Munson  v.  New  York 16  Fed.  Rep 519 

Munson  v.  New  York 19  Fed.  Rep 510 

Munson  v.  New  York '.124  U.  S 21 

Murdoch  v.  Finney 21  Missouri 213 

Myers  v.  Dorr 13  Blatch 439,  454 


Ivi  TABLE   OF   CITED   CASES. 

Names  of  Cases.  Where  reported.  Pages  in  this  book. 

Myers  v.  Dunbar 1  Bann.  &  Ard 478 

Myers  ».  Frame 8  Blatch 158 

National   Car  Brake   Shoe  Co.  «. 

Mfg.  Co 19  Fed.  Rep 292,  319,  376,  416,  422 

National  Machine  Co.  v.  Brown 36  Fed.  Rep 56,  403 

National  Machine  Co.  «.  Hedden. .  .29  Fed.  Rep 497 

National  Machine  Co.  v.  Thorn 25  Fed.  Rep 137 

National  Mfg.  Co.  v.  Myers 15  Fed.  Rep 24 

National  Pump  Cylinder  Co.   ». 

Gunnison 17  Fed.  Rep 188 

National  Roofing  Co.  «.  Garwood. .  .35  Fed.  Rep 27 

National  Spring  Co.  «.  Mfg.  Co 12  Blatch 170 

Neale  v.  Neales 9  Wallace 436 

Neale  v.  Walker 1  Cranch's  Circuit  Court  Reports.  359 

Nellis  v.  Mfg.  Co 13  Fed.  Rep 207,  324 

Nellis  v.  McLanahan 6  Fisher 824 

Nelson  ®.  McMaun 4  Bann.  &  Ard 311 

Nesmith  v.  Calvert 1  Woodbury  &  Minot 217 

Nevins  v.  Johnson 3  Blatch 332 

New  v.  Warren 22  Off.  Gaz 6 

New  American  File  Co.  v.  Nichol- 
son File  Co 8  Fed.  Rep 128,  199 

New  American  File  Co.  v.  Nichol- 
son File  Co 31  Fed.  Rep 142 

New  York  v.  Ransom 23  Howard 413,  421,  538 

New  York   &  Baltimore    Coffee 
Polishing  Co.   v.  New  York 

Coffee  Polishing  Co 9  Fed.  Rep .250,  434 

New  York   &   Baltimore    Coffee 
Polishing  Co.  v.  New  York 

Coffee  Polishing  Co 11  Fed.  Rep 434 

New  York  Belting  Co.  v.  Magowan  .27  Fed.  Rep 509 

New  York  Belting  Co.  v.  Rubber  Co.30  Fed.  Rep 445 

New  York  Belting  Co.  ».  Rubber  Co.  32  Fed.  Rep 474 

New  York  Belting  Co.  v.  Sibley 15  Fed.  Rep 143 

New  York  Paper  Bag  Machine  Co. 

v.  Union'Paper  Bag  MachineCo.32  Fed.  Rep 212,  218 

New  York  Sugar  Co.  v.  Sugar  Co. .  .10  Fed.  Rep 488,  493,  501 

New  York  Sugar  Co.  v.  Sugar  Co. . .  20  Fed.  Rep 436 

New  York  Sugar  Co.  v.  Sugar  Co. .  .24  Fed.  Rep 443 

New  York  Sugar  Co.  v.  Sugar  Co.. .35  Fed.  Rep 472 

New  York  Pharmacal  Association 

v.  Tilden 14  Fed.  Rep 209,  344 

Newell  v.  West 13  Blatch 223 

Nichols  v.  Newell .  .1  Fisher. .  .  254 


TABLE   OF  CITED   CASES.  Ivii 

Names  of  Cases.  Where  reported.  Pages  in  this  book. 

Nicholson  Pavement  Co.  t>.  Jenkins.  14  Wallace 206 

Nicodemus  t.  Frazier 19  Fed.  Rep 31 

Nims  r.  Johnson 7  California 390 

Nonas'  Appeal 71  Penn.  State 541 

Northwestern  Extinguisher  Co.  «. 

Philadelphia  Extinguisher  Co.  .1  Bann.  &  Ard..  .48,  50,  131,  133,  189, 

222,  309 
North  Western  Horse  Nail  Co.  v. 

Horse  Nail  Co 28  Fed.  Rep 269 

Nourse  t>.  Allen 3  Fisher 324 

Noyes  t>.  Willard 1  Woods 440 

O'Brien  «.  Galagher 25  Connecticut 90 

O'Reilly  v.  Morse 15  Howard.  .3,  9,  42,  50,  86,  129,  137, 

139,  151,   154,  155,  156,  159,  185, 

186,  263,  271,  275,  285,  349,  352, 

388,  479 

Odell  *.  Stout 22  Fed.  Rep 49,  159,  177,  187 

Odiorne  t>.  Winkley 2  Gallison 379 

Oliphantt?.  Salem  Flouring  Mills  Co. 5  Sawyer 252 

Oliver  v.  Chemical  Works 109  U.  S 239 

Olivers.  Piatt 3  Howard 215 

Onderdonk  t.  Fanning 5  Bann.  &  Ard 515 

Orrt>.  Littlefield 1  Woodbury  &  Minot.484, 487,  490,  503 

Osbornet>.  Glazier 31  Fed.  Rep 25,  60 

Osborn  t>.  Judd 29  Fed.  Rep 21 

Otis  Mfg.  Co.  v.  Crane  Mfg.  Co. ...  27  Fed.  Rep 311 

Otley  v.  Watkins 36  Fed.  Rep 271,  288 

Ott  v.  Earth 32  Fed.  Rep 270 

Pacific  Bank  v.  Robinson 57  California 221 

Pacific  Iron  Works  v.  Newhall 34  Connecticut 236 

Packet  Co.  v.  Sickles 5  Wallace 329 

Packet  Co.  r.  Sickles 19  Wallace 329,  332,  350,  413,  538 

Page  v.  Ferry 1  Fisher 87,  377 

Page  v.  Telegraph  Co 18  Blatch 472,  497 

Paillard  v.  Burns 29  Fed.  Rep 127 

Palmer  v.  Galling  Gun  Co 8  Fed.  Rep 143 

Palmer  v.  Johnston 34  Fed.  Rep 25 

Paper-Bag  Cases 105  U.  S 203,  232,  311.407 

Parham  v.  Buttonhole  Co 4  Fisher 60,  143 

Parker  v.  Bigler 1  Fisher 376,  404 

Parker  v.  Brant 1  Fisher 431,  483,  485,  488,  497 

Parker  v.  Ferguson 1  Blatch 58 

Parker  v.  Hall 2  Fisher 323,  364 

Parker  v.  Hallock 2  Fisher. .  .364 


Iviii  TABLE  OF  CITED   CASES. 

Names  of  Cases.  Where  reported.  Pages  in  this  book. 

Parker  v.  Hatfield 4  McLean 461,  40'J 

Parker  v.  Hawk 2  Fisher 323,  3C4 

Parker  v.  Haworth 4  McLean 292,  339,  375 

Parker  «.  Hulrne 1  Fisher 55,  292,  422 

Parker  v.  Sears 1  Fisher 509 

Parker  v.  Stiles 5  McLean 155 

Parker  v.  The  Judges 12  Wheaton 514 

Parker  &  Whippie  Co.  v.  Yale 

Clock  Co 123  U.  S 168,  184,  187 

Parkhurst  ».  Kinsman 1  Blatch 506 

Parkhurst  v.  Kinsman 2  Blatch 457 

Parks  v.  Booth 102  U.  S. .  54,  88,  111,  404,  407,  479,  538 

Parrott  v.  Wikoff 1  Louisiana  An'l 211 

Patee  Plow  Co.  t>.  Kingman  &  Co. . .  129  U.  S 21,  185 

Patterson  v.  Duff 20  Fed.  Rep 26 

Patterson  v.  Gaines. 6  Howard 363 

Patterson  v.  Kentucky 97  U.  S 119 

Patterson  v.  Lyttle 11  Penn.  State 241 

Patterson  ®.  Stapler 7  Fed.  Rep 429 

Paynes  «.  Coles ........1  Munford  (Va.) 358,  467 

Pearce  v.  Mulford 102  U.  S 21 

Peard  v.  Johnson 23  Fed.  Rep 31,  273 

Pearl  v.  Ocean  Mills 2  Bann.  &  Ard 187 

Peck  v.  Bacon . .  .18  Connecticut 213 

Peckfl.  Collins 103  U.  S 182,  236 

Peck  v.  Collins 70  N.  Y 236 

Peek  v.  Frame 9  Blatch 423 

Peek  v.  Frame 5  Fisher 153,  156 

Peirce  v.  West's  Executors 1  Peters'  Circuit  Court  Reports. .  456 

Pelton  v.  Waters 1  Bann.  &  Ard 54 

Pennington  v.  Gibson 16  Howard 395 

Pennington  v.  Hunt  20  Fed.  Rep 358 

Pennington  v.  King 7  Fed.  Rep 56 

Pennock  v.  Dialogue 2  Peters 69,  78,  411 

Pennsylvania  Diamond  Drill  Co. 

v.  Simpson 29  Fed.  Rep 49 

Pennsylvania  Railroad  Co.  v. 

Truck  Co 110  U.  8 37 

Pentlarge  v.  Beeston 14  Blatch. 488,  494 

Pentlarge  v.  Beeston 1  Fed.  Rep 516 

Pentlarge  v.  Kirby 19  Fed.  Rep 254,  255 

Pentlarge  «.  Pentlarge 19  Fed.  Rep 246 

People  e.  Sturtevant 5  Selden  (N.  Y.) 508 

Perrigo  «.  Spaulding 13  Blatch 242 

Perry  v.  Cornell 1  McArthur's  Patent  Cases 56 

Perry  v.  Corning 6  Blatch 332,  424 


TABLE   OF   CITED   CASES.  lix 

Names  of  Cases.  Where  reported.  Pages  in  this  book. 

Perry  *.  Corning 7  Blatch 215 

Perry  *.  Foundry  Co 12  Fed.  Rep 81,38 

Perry  *.  Starrett 3  Baun.  &  Ard 52,  290 

Peters*.  Active  Mfg.  Co 129  U.  S 29,  37 

Peters  *.  Hanson 129  U.  S 37 

Peterson  v.  Chemical  Bank 32  N.  Y'. 310 

Pfanschmidt  v.  Mercantile  Co 32  Fed.  Rep 478 

Phelps  v.  Brown 4  Blatch 351,  386 

Phelps  *.  Classen  1  Woolworth 211 

Phelps  v.  Jepson 1  Root  (Connecticut) 224 

Phelps  v.  Mayer 15  Howard 411 

Philadelphia  &  Reading  Railroad 

Co.  v.  Derby 14  Howard 315 

Philadelphia  &  Trenton  Railroad 

Co.  c.  Stimpson 14  Peters 57,  171,  409 

Philip  v.  Nock 13  Wallace 408,  477 

Philip  v.  Nock 17  Wallace 413,  425 

Phillips  v.  Comstock 4  McLean 350 

Phillips  v.  Detroit 3  Bann.  &  Ard 515,  516,  517 

Phillips  v.  Detroit Ill  U.  S 31,  380 

Phillips  v.  Page 24  Howard * 28,  348 

Phipps  t.  Yost 26  Fed.  Rep 31 

Pickering  t?.  McCullough 104  U.  S 26,  30,  52 

Pickhardt*.  Packard 22  Fed.  Rep 207 

Picquet  v.  Swan 3  Mason 309 

Pierson  n.  Screw  Co 3  Story 121, 124 

Piker.  Potter 3  Fisher 136 

Piper*?.  Brown 1  Holmes 519,  542,  546,  550 

Pitts*.  Hall 2  Blatch 40,  70,  82,  286,  448 

Pitts  9.  Hall 3  Blatch 212,  227 

Pitts  *.  Jameson 15  Barbour  (N.  Y.  Supreme  Court)  220 

Pitts  *.  Wemple 1  Bissell 58,  117,  142,  262,  291 

Pitts*.  Whitman 2  Story 213,  262 

Planing  Machine  Co.  *.  Keith 101  U.  8 28,  70,  71,  109,  347,  446 

Plimpton  *.  Winslow 14  Fed.  Rep 76 

Polsdorfer  *.  Wooden  Ware  Works. 37  Fed.  Rep 285 

Pomace  Holder  Co.  «.  Ferguson 119  U.  S 24 

Poutiac  Boot  Co.  *.  Merino  Shoe  Co.  31  Fed.  Rep 217 

Pope  Mfg.  Co.  t>.  Gormully 34  Fed.  Rep 238 

Pope  Mfg.  Co.  *.  Mfg.  Co 34  Fed.  Rep 207,  285 

Pope  Mfg.  Co.  «.  Owsley 27  Fed.  Rep 235,  238 

Poppenhusen  *.  Comb  Co 2  Fisher 63 

Poppenhusen  *.  Comb  Co 4  Blatch 495 

Poppenhusen  t>.  Falke 4  Blatch 319 

Poppenhusen  *.  Falke 5  Blatch 39 

Poppenhusen  *.  Falke 2  Fisher 489.  498 


Ix  TABLE  OF  CITED   CASES. 

Names  of  Cases.  Where  reported.  Pages  in  this  book. 

Porter  Needle  Co.  0.  Needle  Co 17  Fed.  Rep 232 

Porter  Needle  Co.  0.  Needle  Co 22  Fed.  Rep 418 

Post  0.  Hardware  Co 25  Fed.  Rep 431 

Post -0.  Hardware  Co 26  Fed.  Rep 27 

Potter  0.  Brauusdorf 7  Blatch 199,  200,  280 

Potter  «.  Crow  ell 3  Fisher 314,  496,  510 

Potter  0.  Dixou 5  Blatch 105,  247 

Potter  v.  Fuller 2  Fisher 488,  500 

Potter*.  Holland 4  Blatch. .  .190,  191,  207,  311,  487,  501 

Potter  0.  Mack 3  Fisher 508,  510 

Potter  v.  Muller 1  Bond 516 

Potter  v.  Stewart 18  Blatch 185,  280 

Potter  0.  Whitney 1  Lowell 155,  488 

Powder  Co.  v.  Powder  Mfg.  Co 9  Fed.  Rep  514 

Powder  Co.  0.  Powder  Works 98  U.  S 185,  390,  450 

Power  0.  Semmes 1  Cranch's  Circuit  Court  Reports.  406 

Preston  v.  Manard ..116U.  S 29 

Prevost  v.  Gratz 1  Peters'  Circuit  Court  Reports. . .  472 

Prime  0.  Mfg.  Co 16  Blatch 213,  214 

Proctor®.  Brill 16  Fed:  Rep 156 

Prouty  0.  Ruggtes 16  Peters 89,  270,  276,  277,  283,  393 

Puetz  v.  Bransford 31  Fed.  Rep 206,  373 

Pullman  0.  Railroad  Co 5  Fed.  Rep 494 

Purnell  0.  Daniel 8  Iredell's  Equity  Rep.  (N.  C.). . .  484 

Putnam  0.  Yerrington 2  Baun.  &  Ard 185,  464 

Railroad  Co.  0.  Duboise 12  Wallace 137,  241,  249 

Railroad  Co.  0.  Howard 7  Wallace 324 

Railroad  Co.  0  Mellon 104  U.  S 142 

Railroad  Co.  0.  Smith , 21  Wallace 409 

Railroad  Co.  0.  Trimble 10  Wallace 206,  210 

Railroad  Co.  0.  Whitton 13  Wallace 298 

Railway  Co.  0.  Sayles 97  U.  S 63,  143,  271,  281,  350,  393 

Railway  Register  Mfg.  Co.  0.  Rail- 
road Co 23  Fed.  Rep 163 

Railway  Register  Mfg.  Co.  0.  Rail- 
road Co 26  Fed.  Rep 470 

Railway  Register  Mfg.  Co.  0.  Rail- 
road Co 30  Fed.  Rep 272 

Ransom  0.  New  York 1  Fisher 43,  54,  82,  111 

Read  0.  Bowman 2  Wallace 211 

Read  0.  Miller 2  Bissell 346,  364 

Reay  t>.  Envelope  Co 19  Fed.  Rep 509 

Reay  0.  Raynor 19  Fed.  Rep 7,  441 

Reckendorfer  0.  Faber 92  U.  S 30,  140.  380 

Reed  0.  Chase ; 25  Fed.  Rep 271 


TABLE  OF  CITED  CASES.  lii 

Names  of  Cases  Where  reported.  Pages  in  this  book. 

Reed  v.  Cutter 1  Story 58,  156,  158 

Reed  t.  Lawrence 29  Fed.  Rep 527 

Reedy  v.  Scott 23  Wallace 457 

Reeves  t.  Bridge  Co 5  Fisher 46 

Reeves  v.  Bridge  Co 3  Bann.  &  Ard 470,  473 

Rein  t>.  Clayton 37  Fed.  Rep 113,  130 

Reinstadler  ».  Reeves , 33  Fed.  Rep 304 

Reiter  v.  Jones 35  Fed.  Rep 39 

Reutgen  v.  Kanowrs 1  Washington 316 

Rhode  Island  v.  Massachusetts 14  Peters 439,  454 

Rich  v.  Lippincott 2  Fisher 58,  288 

Richc.  Ricketts 7  Blatch 323,  364 

Richards  t>.  West 2  Green's  Chancery  (N.  J) 508 

Richardson  v.  Hicks. . , 1  Me  Arthur's  Patent  Cases 384 

Rifle  &  Cartridge  Co.  v.  Arms  Co. . .  .118  U.  S 69,  70.  71,  72 

Riddick  v.  Moore 65  N.  C 310 

Riddle  v.  Mandeville 5  Cranch 308 

Ritter  r.  Serrell 2  Blatcb 220 

Roberts  v.  Buck 1  Holmes 446 

Roberts  v.  Dickey 4  Fisher 47 

Roberts  «.  Harnden 2  Cliff 275,  277,  291 

Roberts  v.  Rotcr 5  Fisher 262 

Roberts  «.  Ryer 91  U.  S 36,  141,  142 

Roberts  v.  Schuyler 12  Blatch 399 

Roberts??.  Walley 14  Fed.  Rep 376 

Robinson  v.  Randolph 4  Bann.  &  Ard 497,  506 

Roemer  ».  Neumann 23  Fed.  Rep 325 

Roemer  v.  Neumann 26  Fed.  Rep 358 

Roemerc.  Peddie 27  Fed.  Rep 141 

Roemer  v.  Simon 95  U.  S 446,  447,  475 

Roemer  v.  Simon  20  Fed.  Rep 269 

Roemer  v.  Simon 31  Fed.  Rep 419 

Rogers  v.  Abbot 4  Washington 433,  484 

Roosevelt  v.  Electric  Co 20  Fed.  Rep 232 

Roosevelt  v.  Telegraph  Co 33  Fed.  Rep 273 

Root  v.  Railway  Co 105  U.  S. . .  312,  332,  424,  428,  440,  521. 

537,  539 

Rose  v.  Hurley 39  Indiana 217 

Rosenwasser  ».  Spieth 129  U.  S 46 

Ross  v.  Prentiss 4  McLean 474,  475 

Roth  v.  Keebler 30  Fed.  Rep 25 

Rowe  r>.  Blanchard 18  Wisconsin 62,  385 

Rowellfl.  Lindsay 113  U.  S 270,  272 

Royer  r.  Coupe 29  Fed.  Rep. .  .43,  94.  269,  292,  374.  204 

Royerc.  Mfg.  Co 20  Fed.  Rep 37,  393 


Ixii  TABLE   OF  CITED   CASES. 

Names  of  Cases.  Where  reported.  Pages  in  this  book. 

Rubber  Co.  v.  Goodyear 9  Wallace.  .89,  138,  144,  170,  175,  180 

189,  202,  238,  239,  309,  310,  356, 
447,  451,  476,  519,  521,  522,  523, 
524,  525,  527,  531 
Rubber  Trimming  Co.  v.  Rubber 

Comb  Co 35  Fed.  Rep 37,  463 

Ruggles  v.  Eddy 10  Blatch 200 

Ruggles  v.  Eddy 11  Blatch 473 

Rumford  Chemical  Works  ». 

Hecker 11  Blatch 511 

Rumford  Chemical  Works  t>. 

Hecker 2  Barm.  &  Ard. . . . .  .316,  358,  464,  508 

Rumford  Chemical  Works  v.  Vice.  .14  Blatch 496,  500,  510 

Rude  v.  Westcott 130  U.  S 414,  416,  429 

Runstetler  «.  Atkinson Mac  Arthur  &  Mackey 84 

Russell  0.  Barney 6  McLean 395 

Russell  e.  Dodge 93  U.  S 186 

Russell  v.  Place ...94U.  S ...  138 

Russell  v.  Place 9  Blatch 399,  422,  423 

Ryan  v.  Gould 32  Fed.  Rep 474 

Ryan  v.  Lee 10  Fed.  Rep 221 

Saint    Louis     Stamping    Co.     v. 

Quimby 4  Bann.  &  Ard 135 

Salt  Lake  City  v.  Hollister 118  U.  S 318 

Sanford  v.  Messer 1  Holmes 229,  311 

Sargent  v.  Burgess 129  U.  S 273 

Sargent  «.  Larned 2  Curtis . .  235 

Sargent  v.  Lock  Co. .  114  U.  S 143,  270 

Sargent  v.  Mfg.  Co 17  Blatch 419 

Sargent  v.  Seagrave 2  Curtis 489,  490,  491 

Sarven  v.  Hall 9  Blatch 272 

Sauvinet  v.  Poupono 14  Louisiana 434 

Sawyer  Spindle  Co.  •».  Eureka 

Spindle  Co 33  Fed.  Rep 183 

Saxe  v.  Hammond 1  Holmes 317 

Saxton  0.  Aultman 15  Ohio 214 

Sayles  «.  C.  &  K  W.  Railway  Co.  ..2  Fisher 73 

Sayles  v.  C.  &  N.  W.  Railway  Co. .  .4  Fisher 51,  59,  61 

Sayles  0.  Dubuque  &  Sioux  City 

Raliroad  Co 3  Bann.  &  Ard.  .198,  200,  217,  332,  362, 

364 
Sayles  v.  Lake  Shore  &  Michigan 

Southern  Railway  Co 9  Fed.  Rep 324,  362,  364 

Sayles  v.  Oregon  Central  Railroad 

Co. .  .  .4  Bann.  &  Ard. . ,  .362 


TABLE   OF   CITED    CASES.  Ixiii 

Names  of  Cases.  Where  reported.  Pages  in  this  book. 

Sayles  v.  Richmond,  Fredericksburg 

&  Potomac  Railroad  Co 4  Bann.  &  Ard 330,  362 

Sayles'  Executor  «?.  Railroad  Co 9  Fed.  Rep 362 

Schillinger  v.  Brewiug  Co 24  OS.  Gaz 188 

Schillinger  t>.  Cranford 37  Off.  Gaz 173,  271,  272,  397 

Schillinger  «.  Gunther 15  Blatch 525 

Schillinger  v.  Gunther 17  Blatch 154,  157 

Schillinger  t>.  Gunther 2  Bann.  &  Ard 516,  517 

Schlicht  &  Field  Co.  v.  Machine  Co .  36  Fed.  Rep 387 

Schlicht  &  Field  Co.  v.  Machine  Co. 46  Off.  Gaz 43 

Schmid  v.  Mfg.  Co 37  Fed.  Rep 31,  87,  270,  403 

Schneider  v.  Bassett 13  Fed.  Rep 488,  492 

Schneider  v.  Thill 5  Bann.  &  Ard 186 

Schneider  v.  Pountney 21  Fed.  Rep 316 

Schoerken  v.  Swift  &  Courtney  & 

Beecher  Co 7  Fed.  Rep 882 

Schott  v.  Benson 1  Blatch 406 

Schreiber  v.  Sharpless 17  Fed.  Rep 255 

Schwarzenbach  v.  Excavating  Co. .  .35  Off.  Gaz 285 

Scott  v.  Watson 46  Maine 313 

Screw  Co.  v.  Sloan 1  McArthur's  Patent  Cases 21 

Searlese.  Bouton 12  Fed.  Rep 177,  238 

Scarlcs  v.  Merriam 22  Off.  Gaz 35 

Searlesfl.  Railroad  Co 2  Woods 518 

Searles  v.  Worden 11  Fed.  Rep 464 

Sears  «.  United  States 1  Gallison 256 

Sedgwick  v.  Cleveland . .  .7  Paige  (N.  Y.) 457 

Seibert  Oil  Cup  Co.  v.  Beggs 32  Fed  Rep 307 

Seibert  Oil  Cup  Co.  v.  Lubricator  Co.34  Fed.  Rep 229,  236,  240,  444 

Seibert  Oil  Cup  Co.  v.  Manning 32  Fed.  Rep 303 

Seibert  Oil  Cup  Co.  «.  Powell  Co. .  .35  Fed.  Rep 126 

Selden  «.  Gas-Burner  Co 9  Fed.  Rep 180,  174,  183,  189,  190 

Sergeant  v.  Steinberger 2  Ohio 224 

Sewell  v.  Jones 91  U.  S 136,  146 

Sewing  Machine  Co.  v  Frame..24  Fed.  Rep 26,  181 

Seymour  v.  Marsh 6  Fisher 885 

Seymour  v.  McCormick 16  Howard 329,  413J  419,  423,  538 

Seymour*.  McCormick 19  Howard 155,  882 

Seymour  «.  Osborne 11  Wallace. . .47,  63,  90,  114,  117,  187, 

189,  141,  171,  186,  270,  275,  324, 
872,  873,  890,  446 

Shannon  v.  Bruner 82  Fed.  Rep 522 

Shannon  t>.  Bruner 83  Fed.  Rep 534 

Sharp  v.  Riessner 9  Fed.  Rep 455 

:8harp0.  Riessner 119  U.  S 270 

Shaver®.  Mfg.  Co 80  Fed.  Rep 291 


TABLE   OF   CITED   CASES. 

Names  of  Cases.  Where  reported.  Pages  in  this  book. 

Shaw  v.  Boylan 16  Indiana 320 

Shaw  ®.  Cooper 7  Peters 81 

Shaw  ®.  Lead  Co 11  Fed.  Rep 63,  181,  308 

Shaw  Valve  Co.  v.  New  Bedford.. .  .19  Fed.  Rep 223 

Shelly  v.  Branuan 4  Fisher 503 

Shenfield  ®.  Mfg.  Co 27  Fed.  Rep 37 

Shepard  v.  Carrigan 116  U.  S 146,  270 

Sherman  v.  Nutt 35  Fed.  Rep 495 

Shields  «.  Barrow 17  Howard 436 

Shirley  v.  Sanderson 8  Fed.  Rep 60 

Shoup  ®.  Henrici 2  Bann.  &  Ard 50 

Shuter  v.  Davis. 16  Fed.  Rep 39 

Sickles  v.  Borden 3  Blatch 273,  276 

Sickles  v.  Borden 4  Blatch 508,  516 

Sickles®.  Mfg.  Co 1  Fisher 332 

Sickles  10.  Mitchell 3  Blatch 488,  500 

Sickles  v.  Tileston 4  Blatch 500 

Sickles  10.  Young 3  Blatch 489 

Siemens'  Adm'r  v.  Sellers 123  U.  S 129 

Siemens'  Appeal 11  Off.  "Gaz 184 

Silsby  v.  Foote 14  Howard 138,  157,  271,  347,  379 

Silsby  v.  Foote 20  Howard 388,  477,  537 

Silsby  v.  Foote 1  Blatch 468 

Simpson  ®.  Davis 12  Fed.  Rep 52 

Simpson  ®.  Davis 22  Fed.  Rep 428,  522 

Sinclair  ®.  Backus 5  Bann.  &  Ard 76 

Singer  ®.  Braunsdorf 7  Blatch 104 

Singer  Co.  v.  Foundry  Co 34  Fed.  Rep 233 

Singer  v.  Walmsley 1  Fisher 135,  155,  262,  292 

Sisson  v.  Gilbert 9  Blatch 79 

Sizer  ®.  Many 16  Howard , .  406 

Slack  ®.  Walcott 3  Mason 459 

Slawson  v.  Railroad  Co 107  U.  S 21,  348,  380,  445 

Slemmer's  Appeal 58  Penn 43 

Smith  &  Griggs  Mfg.  Co.  v.  Sprague.123  U.  S 76,  96 

Smith  v.  Baker's  Administrators 1  Bann.  &  Ard 332,  424 

Smith  v.  Davis 34  Fed.  Rep 60 

Smith  ®.  Dental  Vulcanite  Co 93  U.  S 28,  38,  46,  72,  109,  142 

Smith  v.  Downing 1  Fisher 263,  264 

Smith  v.  Felt 50  Barbour  (K  Y.) 315 

Smith  v.  Halkyard 16  Fed.  Rep 488 

Smith®.  Halkyard .19  Fed.  Rep 515 

Smith  ®.  Mercer 3  Penn.  L.  J.  Reports. 190 

Smith  ®.  Merriam 6  Fed.  Rep 174 

Smith  ®.  Murray 27  Fed.  Rep 30 

Smith®.  Nichols 21  Wallace 33,  158 


TABLE  OF  CITED   CASES.  Ixv 

Names  of  Cases.  Where  reported.  Pages  in  this  book. 

Smith  v.  Selden 1  Blatch 211 

Smith  v.  United  States 1  Gallison 256 

Smith®.  Woodman 8  Foster  (28  N.  H.) 329 

Snow  v.  Railway  Co 18  Fed.  Rep 270 

Snow*.  Railway  Co 121  U.  S 270 

Snow  v.  Taylor 4  Bann.  &  Ard 24 

Snyder  v.  Bunnell 29  Fed.  Rep 317 

Solomons  v.  United  States 21  and  22  Court  of  Claims 208,  240 

Sohn  v.  Waterson 17  Wallace 361 

Sone  v.  Palmer 28  Missouri 213 

Southard  v.  Russell  16  Howard 475,  476 

Spaeth  v.  Barney 22  Fed.  Rep 337 

Sparhawk  v.  Mills 5  Gray  (Mass.) 550 

Sparkman  v.  Higgins 1  Blatch 42,  507 

Spaulding  v.  Page 1  Sawyer 242 

Spaulding  v.  Tucker 1  Deady 377 

Spaulding  v.  Tucker 4  Fisher 406 

Spering's  Appeal 71  Penn.  State 321 

Sperry  v.  Ribbaus 3  Bann.  &  Ard 500 

Spill*.  Mfg.  Co «...21  Fed.  Rep 37,471 

Spill  TJ.  Mfg.  Co 28  Fed.  Rep 474 

Sprague  v.  Mfg.  Co 12  Fed.  Rep 75 

Spring  v.  Domestic  Sewing  Ma- 
chine Co 4  Bann.  &  Ard 493,  500 

Spring  v.  Sewing  Machine  Co 13  Fed.  Rep 442 

Stafford  v.  Hair-Cloth  Co 2  Cliff 399 

Stainthorp  v.  Humiston 2  Fisher 501,  503 

Stainthorp  v.  Humiston .4  Fisher 49 

Star  Salt  Castor  Co.  v.  Grossman 4  Bann.  &  Ard 428,  525 

Starling  v.  Plow  Works 29  Fed.  Rep 236 

Starling®.  Plow  Works 32  Fed.  Rep 237 

Steam  Gauge  &  Lantern  Co.  v. 

Meyrose 27  Fed.  Rep 359 

Steam  Gauge  &  Lantern  Co.  v. 

Mfg  Co 25  Fed.  Rep 502 

Steam  Gauge  &  Lantern  Co.  v. 

Mfg.  Co 28  Fed.  Rep 274 

Steam  Gauge  &  Lantern  Co.  ®. 

Mfg.  Co 29  Fed.  Rep.... 263 

Steam  Gauge  &  Lantern  Co.  v. 

Miller 8  Fed.  Rep 493 

Steam  Gauge  &  Lantern  Co.  v. 

Miller 11  Fed.  Rep 505 

Steam  Gauge  &  Lantern  Co.  v. 

Rogers 29  Fed.  Rep 284 

Steam  Stone  Cutter  Co.  9.  Mfg.  Co.  17  Blatch 242,  520,  523,  524,  539 


TABLE  OF  CITED   CASES. 

Names  of  Cases.  Where  reported.  Pages  in  this  book. 

Steam  Stone  Cutter  Co,  v.  Sheldon.  .10  Blatch 231,  237 

Steam  Stone  Cutter  Co.  v.  Sheldon.  .15  Fed.  Rep 330 

Steam  Stone  Cutter  Co.  «.  Short- 
sleeves 16  Blatch .230,  231 

Stearns  v.  Davis 1  McArthur's  Patent  Cases 42 

Stegner  v.  Blake.   36  Fed.  Rep 25,  141,  142,  466 

Steiger  v.  Heidelberger 4  Fed.  Rep 314 

Stein  ».  Goddard 1  McAlister 307 

Stephens  v.  Felt 2  Blatch 421 

Stephenson  ».  Railroad  Co 14  Fed.  Rep 51 

Stephenson  «.  Railroad  Co 114  U.  S 21,  31 

Sterrick  ®.  Pugsley 1  Central  Law  Journal 486 

Stevens  v.  Baltimore  &  Ohio  Rail- 
road Co 6  Fed.  Rep  332 

Stevens  v.  Cady 14  Howard 120,  232 

Stevens  v.  Gladding 17  Howard 120,  232 

Stevens  v.  Kansas  Pacific  Railway 

Co 5  Dillon 332 

Stevens  v.  Pritchard 2  Bann.  &  Ard 140 

Stevens  v.  Salisbury 1  McArthur's  Patent  Cases 57 

Stevenson  ».  Magowan 31  Fed.  Rep 145 

Stewart  v.  Tenk 32  Fed.  Rep 43 

Stiles®.  Rice 29  Fed.  Rep 146 

Still  v.  Reading 20  Off.  Gaz 312,  339 

Stillwell  &  Pierce  Mfg.  Co.  v.  Cin- 
cinnati Gas  Light  and  Coke  Co .  1  Bann.  &  Ard 49 

Stimpson  v.  Pond 2  Curtis 254,  255 

Stimpson  v.  Railroad  Co 4  Howard 171,  192 

Stimpson  v.  Railroad  Co 10  Howard 277 

Stimpson  v.  Railroads 1  Wallace's  Circuit  Ct.  Rep. . .  399,  425 

Stimpson  «.  Rogers 4  Blatch 131,  429 

Stimpson  v  Woodman 10  Wallace 34 

Stitt  t>.  Railroad  Co 22  Fed.  Rep 58,  59 

Story  v.  Livingston 13  Peters 546 

Stow  v.  Chicago 104  U.  S 46 

Stow  v.  Chicago 3  Bann.  &  Ard  29,  32 

Streat®.  White  , 35  Fed.  Rep 43 

Strobridge  v.  Lindsay 6  Fed.  Rep 285,  517 

Stuart  v.  Thorman 37  Fed.  Rep 497 

Sturges  v.  Van  Hagan 6  Fisher 248 

Sturgis  v.  Knapp 83  Vermont 508 

Stutz  v.  Armstrong 20  Fed.  Rep 31 

Stutz  v.  Armstrong 25  Fed.  Rep   242 

St.  Paul  Plow  Works  v.  Starling. . .  .127  U.  S 408,  477 

Suffolk  Co.  c.  Haydeu 3  Wallace 55,  242,  412 

Sullivan  v.  Judah 4  Paige  (N.  Y.) 508 

Sullivan  «.  Railroad  Co. .       94  U.  S 443,  444 


TABLE  OF  CITED   CASES.  Ixvii 

Names  of  Cases.  Where  reported.  Pages  in  this  book. 

Sugar  Refinery  Co.  v.  Malhiessen. .  .3  Cliff 546 

Sutler  t.  Robinson 119  U.  S 146 

Suydam  v.  Day 2  Blatch 219 

Swift  v.  Jeuks 29  Fed.  Rep 244 

Swift  v  Wbisen 2  Bond 190 

Sykes  v.  Manhattan  Co 6  Blatch 503 

Tack  Co.  v.  Mfg.  Co 109  U.  S 24,  31 

Tarr  v.  Folsom 1  Bann.  &  Ard Ill 

Tatham  v.  Lowber 4  Blatch 520,  539 

Taylor  t>.  Archer 8  Blatch 148,  152 

Taylor  v.  Porter 4  Hill  (N.  Y.) 115,  122 

Teese  t>.  Huntington 23  Howard 346,  423,  425,  447 

Telephone  Cases 126  U.  S.  .4,  7,  11,  21,  37,  85,  128,  138, 

141 

Temple  Pump  Co.  v.  Mfg.  Co 30  Fed.  Rep 142 

Temple  Pump  Co.  t>.  Mfg.  Co 31  Fed.  Rep 515 

Terhune  «.  Phillips 99  U.  S 27 

Terry  Clock   Co.    v.   New  Haven 

Clock  Co 4  Bann.  &  Ard 26 

Thatcher  Heating  Co.  t>.  Burtis 121  U.  S 31 

Thayer  v.  Hart 20  Fed.  Rep 60 

The  Baltimore 8  Wallace 404 

The  Commander-in-Chief 1  Wallace 549,  550 

The  Moses  Taylor 4  Wallace 298 

The  Santa  Maria 10  Wheaton 478 

The  Tremolo  Patent 23  Wallace 436,  528 

Theberatu  T.  Trimming  Co 5  Bann.  &  Ard 455 

Theberath  t>.  Trimming  Co 15  Fed.  Rep 19,  77,  489 

Thomas  v.  Harvie's  Heirs 10  Wheaton 475 

Thomas  v.  Quintard 5  Duer  (N.  Y.) 216 

Thompson  v.  Boiesselier 114  U.  8 21 

Thompson  v.  Gildersleeve 84  Fed.  Rep 141,  142,  270 

Thompson  v.  Mendelsohn 5  Fisher 496 

Thompson  v.  Wooster 114  U.  S 169 

Tibbe  Mfg.  Co.  t>.  Heinken 37  Fed.  Rep 493 

Tilghman  v.  Mitchell 9  Blatch. .  .199,  202,  489,  502,  539,  541 

Tilghman  v.  Proctor 102  U.  S 11,  136,  259,  539,  541 

Tilghman  v.  Proctor 125  U.  S.  .413,  462,  519,  521,  533,  541, 

549 

Time  Telegraph  Co.  v.  Himmer 19  Fed.  Rep 377,  488 

Timken  v.  Olin 37  Fed.  Rep 25,  471 

Tobey  Furniture  Co.  v.  Colby 35  Fed.  Rep 503 

Toledo  Reaper  Co  v.  Harvester  Co.  .24  Fed.  Rep 509 

Tompkins  v.  Butterfield 25  Fed.  Rep 253,  255 

Tompkins  v.  Gage 5  Blatch 138 

Tomkinson  v.  Mfg.  Co 23  Fed.  Rep 290 


TABLE    OF   CITED    CASES. 

Names  of  Cases.  •  Where  reported.  Pages  in  this  book. 

Tomkinson  v.  Mfg.  Co 34  Fed.  Rep 525 

Tonduer  v.  Chambers 37  Fed.  Rep 25,  92,  273 

Too  hey  v.  Harding 4  Hughes 262 

Toplif  v.  Toplif 122  U.  S 211 

Tracy  v.  Torrey 2  Blatch 502 

Trader  v.  Messmore 1  Baun.  &  Ard 146 

Travers  v.  Palmer 23  Fed.  Rep 271 

Travers  v.  Spreader  Co 35  Fed.  Rep 497 

Trecothick  v.  Austin 4  Mason 310 

Troy  Iron  and  Nail  Factory  v. 

Corning 14  Howard 231,  238,  479 

Troy  Iron  and  Nail  Factory  «. 

Corning 6  Blatch. . .  .523,  524,  539,  544,  546,  547 

Troy  Iron  and  Nail  Factory  v. 

Corning 7  Blatch 404 

Troy  Machinery  Co.  D.  Bunnell. ...  27  Fed.  Rep 31,  36 

Tuck  t>.  Bramhill 6  Blatch 138,  152,  158 

Tucker  •».  Carpenter 1  Hempstead 507 

Tucker  v.  Spalding 13  Wallace 36,  398,  424 

Tufts  v.  Tufts 3  Woodbury  &  Minot 471 

Tumbull  v.  Plow  Co 6  Bissell 213.  215 

Turrell  «.  Spaeth 3  Bann.  &  Ard 187,  272,  273 

Turrill  «.  Railroad  Co 1  Wallace 59.  145,  397 

Tuttlefl.  Gaylord 28  Fed.  Rep 525 

Tuttle  v.  Matthews 28  Fed.  Rep 242,  435 

Tyler  t>.  Boston  7  Wallace 89,  135.  288,  379 

Tyler  «.  Galloway 12  Fed.  Rep 154,  158 

Tyler  v.  Hyde 2  Blatch 248 

Union  Bank  v.  Kerr 2  Maryland  Chancery 483 

Union  Edge  Setter  Co.  «.  Keith 31  Fed.  Rep 36 

Union  Mfg.  Co.  v.  Lounsbury 41  New  York 204 

Union  Mfg.  Co.  v.  Lounsbury 42  Barbour  (N.  Y.) 237 

Union  Metallic    Cartridge   Co.   v. 

United  States  Cartridge  Co 2  Bann.  &  Ard 271 

Union  Paper  Bag  Machine  Co.  ». 

Binney 5  Fisher 484,  497,  500.  502 

Union  Paper  Bag  Machine  Co.  v. 

Crane 1  Bann.  &  Ard 105,  235,  246 

Union  Paper  Bag  Machine  Co.  v. 

Newell 11  Blatch 428,  483,  506 

Union  Paper  Collar  Co.  v.  Leland. .  .1  Bann.  &  Ard  35 

Union  Stone  Co.  v.  Allen 14  Fed.  Rep 263 

Union  Sugar  Refinery  v.  Matthiessen .  2  Fisher 275,  383 

United    Nickel  Co.   v.   Electrical 
Works 25  Fed.  Rep 232 


TABLE   OF  CITED   CASES.  Ixix 

Names  of  Cases.  Where  reported.  Pages  in  this  book. 

United  Nickel  Co.  «.  Pendleton 15  Fed.  Rep 280 

United  Nickel  Co.  v.  Railroad  Co. . . 36  Fed.  Rep 415,  416 

United  Nickel  Co.  v.  Worthington.  .13  Fed.  Rep 314,  319 

United  States  t.  Bell  Telephone  Co . .  29  Fed.  Rep 119 

United  Stalest).  Bell  Telephone  Co..  128  U.  S 250 

United  States  v.  Burns 12  Wallace 120 

United  States  e.  Butterworth 3  Mackey 98 

United  Siates  ».  Colgate 21  Fed.  Rep 250 

United  States  v.  Colgate 32  Fed.  Rep 99 

United  States  «.  Commissioner  of 

Patents 7  Off.  Gaz 84,  105 

United  States  v.  Delespine's  Heirs. .  .12  Peters 390 

United  Stales*.  Lee 106  U.  S 71,  299,  306,  313 

United  States  t>.  Marble 2  Mackey 105 

United  States  «.  Morris 2  Bond 253,  255 

United  States®.  Palmer 128  U.  S 120,  240,  305 

United  States  «.  Reid 12  Howard 225,  365 

United  States  v.  Samperyac Hemstead's  Circuit  Court  Reports.  476 

United  States  Annunciator  Co.  v. 

Sanderson 3  Blatch 377,  495,  501 

United  States  Bung  Mfg.  Co.  v. 

Independent  Bung  Co 31  Fed.  Rep 58,  46 

United  States  Electric  Lighting 

Co.  T.    Consolidated  Electric 

Light  Co  33  Fed.  Rep 447 

United  States  Felting  Co.  v.  Asbes- 
tos Felting  Co 4  Fed.  Rep 358 

United  States  Packing  Co.  v.  Tripp. 31  Fed.  Rep 358 

United  States  Stamping  Co.  v.  King.17  Blatch 192,  497 

United  Slates  Stamping  Co.  v. 

Jewett 7  Fed.  Rep 206 

Untermeyerfl.  Freund 87  Fed.  Rep 21,  fit 

Upton  v.  Wayland  36  Fed.  Rep 489 

Urner  a.  Kayton 17  Fed.  Rep 542 

Van  Buskirk  v.  Hartford  Fire  In- 
surance Co 14  Connecticut 213 

Van  Hook  v.  Pendleton 1  Blatch 444,  500 

Van  Ostrand  T>.  Reed 1  Wendell  (N.  Y.) 217 

Vance  «.  Campbell 1  Black. . .  .152,  225,  270,  277,  323,  365, 

871,  409,  446 

Vance  v.  Campbell 1  Fisher.     63,  66 

Varickt>.  Briggs 6  Paige  (N.  Y.) 214 

Vattier  v.  Hinde 7  Peters 436,  459 

Vaughan  v.  Central  Pacific  Rail- 
road Co. . .  . .  3  Bann.  &  Ard. .  .  332 


1XX  TABLE    OF   CITED   CASES. 

Names  of  Cases.  Where  reported.  Pages  in  this  book. 

Vaughau  v.  East  Tennessee,  Vir- 

giuisi  and  Georgia  Railroad  Co.  .2  Bann.  &  Ard 332 

Vermont  Farm  Machine  Co.  •». 

Marble 19  Fed.  Rep 71 

Vermont  Farm  Machine  Co.  «. 

Marble 20  Fed.  Rep 100 

Vinton  ®.  Hamilton 104  U.  S 23 

Vogler  v.  Semple •. 7  Bissell 279 

Vose  v.  Singer 4  Allen  (Mass).. 227 

Vulcanite  Paving  Co.  ».  Pavement 

Co 36  Fed.  Rep 414,  525 

Wade  v.  Metcalf 129  U.  S 120 

Walker  v.  Hawxhurst 5  Blatch 253 

Walker  «.  Rawson 4  Bann.  &  Ard 24 

Wallace  ».  Holmes 9  Blatch 316 

Wallace®.  Noyes 13  Fed.  Rep 26 

Ward  v.  County  of  Hartford  12  Connecticut 313 

Wardfl.  Plow  Co  14  Fed.  Rep 26 

Washburn  v.  Gould 3  Story. . .  .155,  191,  210,  220,  397,  400 

Washburn  &  Moen  Mfg.*  Co.  v. 

BarbedWireCo 33  Fed.  Rep 36 

Washburn  &  Moen  Mfg.  Co.  ». 

Barbed  Wire  Fence  Co 22  Fed.  Rep 499 

Washburu  &  Moen  Mfg.  Co.  v. 

Haish 4  Bann.  &  Ard 256 

Washburn  &  Moen  Mfg.  Co.  v. 

Haish 4  Fed.  Rep 61.  207,  219 

Washburn  &  Moen  Mfg.  Co.  v. 

Schutt  Co 22  Fed.  Rep 499 

Washing-Machine  Co.  v.  Earle 3  Wallace,  Jr 219 

Washing  Machine  Co.  v.  Tool  Co...  20  Wallace 143 

Waterbury  Brass  Co.  ».  Miller 9  Blatch 262,  266,  291 

Waterbury  Brass  Co.  v.  New  York 

Brass  Co 3  Fisher 877,  378,  398 

Waterman  v.  Mackenzie 29  Fed.  Rep 307,  311 

Waterman  v.  Thomson .' . .  2  Fisher 50 

Water-Meter  Co.  v.  Desper 101  U.  S ...  271 

Watson  v.  Railway  Co 23  Fed.  Rep. 31 

Watt  v.  Starke 101  U.  S 468 

Wayne  v.  Winter 6  McLean 384 

Webber  v.  Virginia 103  U.  S 119 

Webster  v.  New  Brunswick  Carpet 

Co IBann.  &  Ard 72,  279 

Webster  Loom  Co.  «.  Higgins 4  Bann.  &  Ard 60 

Weir  v.  Morden 125  U.  S 24 

Welling  v.  Crane 14  Fed.  Rep 27 


TABLE   OF  CITED   CASES.  Ixxi 

Names  of  Cases.  Where  reported.  Pages  in  this  book. 

Welling  D.  La  Bau 32  Fed.  Rep.  34  Fed.  Rep 279,  549 

Welling  *  La  Bau 35  Fed.  Rep 423 

Welling  v.  Trimming  Co 2  Bann.  &  Ard 515 

Wells  9.  Gill 6  Fisher 485,  497,  502 

Werner  *  King , 96  U.  8 273 

West  v.  Barnes 2  Dallas 408 

West*  Rae ...30  Fed.  Rep 445 

Westcott  v.  Rude 19  Fed.  Rep 415,  416,  418 

Western  Electric  Mfg.  Co.  *  Odell .  18  Fed.  Rep 21 

Western  Union  Telegraph  Co.  * 

Telegraph  Co 25  Fed.  Rep 498 

Westinghouse  v.  Air  Brake  Co 2  Bann.  &  Ard 141 

Westiughouse  *  Carpenter 46  Off.  Gaz 509,  512 

Westinghouse    Air  Brake    Co.    * 

Carpenter 32  Fed.  Rep 501 

Weston  v.  White 13  Blatch 109 

Wetherell  v.  Keith 27  Fed.  Rep 60 

Wetherill  v.  Zinc  Co 6  Fisher  203,  211,  234 

Wetherill  v.  Zinc  Co 1  Baun.  &  Ard.  .332,  364,  515,  521,  533 

Wheeler  v.  McCormick ....8  Blatch 440,  496 

Wheeler  v.  McCormick 11  Blatch 509 

Wheeler  v.  Reaper  Co 10  Blatch 63,  272 

Whipple  v.  Hutchinson 4  Blatch 514,  516 

Whipple  v.  Mfg.  Co ...4  Fisher 377 

Whipple*  Miner 15  Fed.  Rep 100 

White*  Dunbar 119  U.  S 142,  180,  188 

White*.  Heath 10  Fed.  Rep.. 495 

White  v.  Lee 5  Bann.  &  Ard 236 

White  v.  Lee 14  Fed.  Rep 29,  235 

White*  Mfg.  Co 24  Off.  Gaz 152 

Whiteley  v.  Swayne 4  Fisher 176 

Whiting  *  The  Bank  of  the  Unit- 
ed States 13  Peters 474,  475 

Whiting*  Graves 3  Bann.  &  Ard 207,  208,  227 

Whitney  v.  Mowry 3  Fisher 478 

Whitney  *  Mowry 4  Fisher. .  .   67 

Whittemore  *  Cutter 1  Gallison 420,  425 

Wicke*  Kleinknecht . . .". 1  Bann.  &  Ard 233 

Wicks  *  Stevens 2  Bann.  &  Ard 176 

Wickersham's  Case  4  Off.  Gaz 198 

Wickersham  v.  Singer 1  McArthur's  Patent  Cases 72 

Wilbur  *  Beecher 2  Blatch 422 

Wilcox*  Bookwalter 31  Fed.  Rep 25 

Wilcox  *  Jackson 13  Peters 508 

Wilcoxen  *  Bowles 1  Louisiana  An'l 211 

Wilder*  Kent 15  Fed.  Rep 233 

Wilder  *  McCormick 2  Blatch 335,  336,  340,  341 


Ixxii  TABLE   OF   CITED   CASES. 

Names  of  Cases.  Where  reported.  Pages  in  this  book. 

Wiley  v.  Yale 1  Metcalf  (Mass.) 329 

Wilkins  0.  Ellett 108  U.  S 309 

Wilkius  v.  Jordan 3  Washington  505 

Willardfl.  Cooper 28  Fed.  Rep 25 

Williams  0.  Boston  &  Albany  Rail- 
road Co 4  Bann.  &  Ard 82 

Williams  0.  Leonard 9  Blatch 523 

Williams  0.  Stolzenbach 23  Fed.  Rep 271 

Willimantic  Linen  Co.  0.  Clark 

Thread  Co 24  Fed.  Rep 472 

Willimantic  Thread  Co.  <o.  Clark 

Thread  Co 27  Fed.  Rep 418 

Willis®.  McCullen 29  Fed.  Rep 316 

Wilson  v.  Barnurn 8  Howard 480 

Wilson  0.  Chickering 14  Fed.  Rep 311 

Wilson*.  Coon 18  Blatch 133,  167,  169,  388 

Wilson  v.  Janes 3  Blatch 399 

Wilson  v.  Mfg.  Co 12  Fed.  Rep. 253 

Wilson  v.  Rousseau 4  Howard.  .183, 198, 199,  201,  203,  211, 

212,  220,  307,  390 

Wilson  v.  Sandford 10  Howard 301 

Wilson  v.  School  District 32  New  Hampshire 813 

Wilson  0.  Sherman 1  Blatch 496,  499 

Wilson  v.  Simpson. 9  Howard. 204 

Wilson  0.  Stolley 4  McLean 231,  232,  437 

Wilson  0.  Turner Taney's  Circuit  Ct.  Decisions.  198.  199 

Wilton  0.  Railroad  Co 1  Brightley's  Federal  Digest 66 

Winans  0.  Denmead 15  Howard 38,  145,  146,  267 

Winans  0.  Railroad  Co 21  Howard 147 

Wintermute  0.  Redington 1  Fisher 223 

Wing  0.  Warren 5  Fisher 189 

Winne  0.  Snow 19  Fed.  Rep 252,  254,  255 

Wire  Book  Sewing  Machine  Co.  v. 

Stevenson 11  Fed.  Rep 235,  246 

Wirt0.  Brown 30  Fed.  Rep 269,  515 

Wiscott  0.  Agricultural  Works 11  Fed.  Rep 227 

Wise  0.  Allis 9  Wallace 347 

Wise  0.  Railway  Co 33  Fed.  Rep". 431,  443 

Wisner  v.  Grant 5  Bann.  &  Ard 139,  188 

Wollensak0.  Reiher 115  U.  8 180,  389 

Wollensak  0.  Sargent    33  Fed.  Rep 489,  493 

Wood  0.  Mill  Co 4  Fisher 60 

Wood  «.  Railroad  Co. ^..2  Bissell 204 

Wood  0.  Underbill 5  Howard 135 

Wood  0.  Wells 6  Fisher 237 

Wood-Paper  Patent 23  Wallace ,. . .  186 

Woodbridge  0.  Perkins 3  Day  (Connecticut) 213 


TABLE  OF  CITED   CASES.  Ixxiii 

Names  of  Cases.  Where  reported.  Pages  in  this  book. 

Woodruff  «.  Barney 2  Fisher 406 

Woodward  v.  Morrison 1  Holmes 288 

Woodworth  v.  Cook 2  Blatch 211,  237 

Woodworth  v.  Curtis 2  Woodbury  &  Minot 203,  204,  231 

Woodworth  v.  Edwards 3  Woodbury  &  Minot. . .  195,  316,  433, 

486,  487 

Woodworth  «.  Hall 1  Woodbury  &  Minot 189,  487 

Woodworth  v.  Rogers 3  Woodbury  &  Minot .  505,  506,  507,  516 

Woodworth  v.  Stone 3  Story 189,  191,  495 

Woodworth  t>.  Weed 1  Blatch 237,  499 

Woonsocket  Rubber  Co.  «.  Caudee.  .23  Fed.  Rep 30 

Wooster  v.  Handy 21  Fed.  Rep 471 

Wooster  v.  Handy 23  Fed.  Rep 404,  474 

Wooster  v.  Machine  Co 4  Bann.  &  Ard 500 

Wooster  v.  Manufacturing  Co 23  Off.  Gaz 237 

Wooster  v.  Marks 17  Blatch 315 

Wooster  «  Sidenberg 13  Blatch 203 

Wooster  v.  Simonson 16  Fed.  Rep 418 

Wooster  v.  Simonson 20  Fed.  Rep 415 

Wooster  v.  Taylor 14  Blatch 521 

Worden®.  Searls 121  U.  S 517 

Worley  v.  Tobacco  Co 104  U.  S 75,  96 

Worswick  Mfg.  Co.  v.  Buffalo 20  Fed.  Rep 60 

Worswick  Mfg.  Co.  «.  Philadelphia.  30  Fed.  Rep 464 

Wortendyke  t>.  White 2  Bann.  &  Ard 232,  499 

Wright  v.  Bales 2  Black 225,  323,  365,  371 

Wright  v.  Dame 22  Pickering  (Mass.) 432 

Wright  n.  Randel 8  Fed.  Rep 212,  214 

Wright  v.  Wilson 11  Richardson  (S.  C.  Law  Rep.). .  216 

Wyeth  v.  Stone 1  Story 81,  157,  262 

Yale  &  Greenleaf  Mfg.  Co.  v.  North. 5  Blatch 510 

Yale  Lock  Co.  v.  National  Bank  . .  .17  Fed.  Rep 36 

Yale  Lock  Co.  v.  Greenleaf 117  U.  S 24 

Yale  Lock  Co.  «.  Sargent 117  U.  S.  .154,155,156,264,270,413,420 

York  &  Cumberland  Railroad  Co. 

t>.  Myers 18  Howard 408 

York  &  Maryland  Line  Railroad 

Co.  v.  Winans 17  Howard 133,  312,  318,  322 

Young  v.  Foerster 87  Fed.  Rep 233,  314 

Young  v.  Lippman 9  Blatch 485,  505 

Yuengling  v.  Johnson 1  Hughes 484,  487 

Zane  «.  Peck 13  Fed.  Rep 414 

Zane«.  Soffe 5  Bann.  &  Ard 396 

Ziun  v.  Weiss 7  Fed.  Rep 263 


THE    PATENT    LAWS. 


CHAPTER  I. 


THE  SUBJECTS  OF  PATENTS. 


1.  Constitutional  and  statutory  foun- 

dation of  the  patent  laws. 

2.  Constitutional      and      statutory 

meaning  of  the  word  "dis- 
covery. " 

3.  Patent  law  meaning  of  the  word 

"art." 

4.  Patent  law  meaning  of  the  word 

"process,"  as  illustrated  in  the 
case  of  Corning  v.  Burden. 

5.  Patent  law  meaning  of  the  word 

"process,"  as  illustrated  by 
the  case  of  MacKay  t>.  Jack- 
man,  and  by  other  Circuit  Court 
cases. 

6.  Patent     law   meaning     of     the 

word  "process,"  precisely  de- 
fined. 

7.  Difference  between  a  patent  for  a 

"process,"  and  a  patent  for  a 
"principle,"  inquired  into. 

8.  Illustrated  by  the  case  of  McClurg 

v.  Kingsland. 

9.  Illustrated  by  the  case  of  O'Reilly 

«.  Morse. 


10.  Illustrated  by  the  case  of  Mowry 
v.  Whitney. 

11.  Illustrated  by  the  case  of  Tilgh- 
man  «.  Proctor. 

lla.  Illustrated   by   the   Telephone 
Cases. 

12.  Illustrated    by   the    five    cases 
when  compared. 

13.  Illustrated    by   the   five    cases 
when  contrasted. 

14.  Deduced  from  the  five  cases  as 
compared  and  contrasted. 

15.  Illustrated  by  the  eighth  claim 
of  Morse. 

16.  Machines,  and  improvements  of 
machines. 

17.  Manufactures. 

18.  Compositions  of  matter. 

19.  Distinction  between  machines, 
manufactures,     and     composi- 
tions of  matter. 

20.  Designs. 

21.  On  whose  invention  designs  are 
patentable. 

22.  Utility  and  beauty  of  designs. 


§  1.  CONGRESS  has  power  to  promote  the  progress  of  science 
and  useful  arts,  by  securing  for  limited  times  to  inventors, 
the  exclusive  right  to  their  respective  discoveries.1  This 
constitutional  law  is  the  foundation  of  all  the  patent  laws 


1  Constitution  of  the  United  States  of  America,  Article  I.,  Section  8. 


2  THE   SUBJECTS   OF   PATENTS.  [CHAP.  I. 

of  the  United  States.  In  accordance  with  the  power  it  con- 
fers, and  in  pursuance  of  the  object  it  mentions,  Congress 
has,  from  time  to  time,  enacted  certain  statutes.  The  prin- 
cipal enactment,  in  force  at  this  writing,  is  Section  4886  of 
the  Ee vised  Statutes  of  the  United  States.  Subject  to  cer- 
tain conditions  and  limitations,  hereafter  to  be  explained  in 
this  book,  that  section  provides  that  any  person  who  has 
invented  or  discovered  any  new  and  useful  art,  machine, 
manufacture,  or  composition  of  matter,  or  any  new  and 
useful  improvement  thereof,  may  obtain  a  patent  therefor. 
Statute  law,  identical  with  this,  has  been  in  force  in  the 
United  States  ever  since  April  10,  1790;  except  that  the 
conditions  and  limitations  attending  it  have  varied  some- 
what from  time  to  time ;  and  except  that  compositions  of 
matter  were  not  mentioned  in  the  statute  prior  to  that  of 
February  21,  1793,  though  they  were  doubtless  covered  by 
the  word  "  manufacture,"  which  the  earlier  statute  con- 
tained. 

§  2.  The  word  "  discovery  "  does  not  have,  either  in  the 
Constitution  or  the  statute,  its  broadest  signification.  It 
means  invention,  in  those  documents,  and  in  them  it  means 
nothing  else.1  The  "  discoveries  "  of  inventors  are  inven- 
tions. The  same  man  may  invent  a  machine,  and  may  dis- 
cover an  island  or  a  law  of  nature.  For  doing  the  first  of 
these  things,  the  patent  laws  may  reward  him,  because  he 
is  an  inventor  in  doing  it ;  but  those  laws  cannot  reward 
him  for  doing  either  of  the  others,  because  he  is  not  an  in- 
ventor in  doing  either.  The  statute  provides  that  patents 
may  be  granted  for  four  classes  of  things.  These  are  arts, 
machines,  manufactures,  and  compositions  of  matter.  None 
of  these  things  can  be  originally  made  known  by  discovery, 
.as  our  continent  was.  They  are  not  found,  but  are  created. 
'They  are  results  of  original  thought.  They  are  inventions. 
.Laws  o±  nature,  on  the  other  nand,  can  never  be  invented 
bv  man,  though  they  may  be  discovered  by  him.  When 
discovered,  they  mav  be  utilized  by  means  of  an  art,  a 

1  In  re  Kemper,  1  McArthur's  Patent  Cases,  4,  1841. 


CHAP.  I.]  THE   SUBJECTS   OF   PATENTS.  3 

machine,  a  manufacture,  or  a  composition  of  matter.  It  is 
the  invention  of  one  or  more  of  these,  for  the  purpose  of 
utilizing  a  law  of  nature,  and  not  the  discovery  of  that  law, 
that  may  be  rewarded  with  a  patent.1  In  a  few  published 
precedents,  there  are  phrases  which  seem  to  imply  discord 
with  these  propositions ;  but  there  is  no  American  case 
which  invalidates  them,  and  they  are  all  implied  and  illus- 
trated in  the  scientific  and  legal  histories  of  the  discoveries 
and  inventions  which  pertain  to  the  telegraph. 

Stephen  Gray,  in  1729,  discovered  the  electric  current, 
and  discovered  that  some  substances  are  conductors,  while 
other  substances  are  non-conductors  of  that  current ;  but 
he  did  not  live  to  see  those  laws  of  nature  utilized  in  any 
way.  Other  discoveries,  relevant  to  electricity,  were  made 
later  in  the  eighteenth  century,  by  Franklin,  by  Galvani, 
and  by  Volta.  The  researches  of  (Ersted,  Ampere,  and 
Arago,  about  the  year  1820,  disclosed  the  fact  that  a  cur- 
rent of  electricity,  passing  through  an  insulated  wire,  will 
magnetize  a  piece  of  soft  iron  around  which  any  part  of 
that  wire  is  coiled ;  and  the  further  fact,  that  when  that 
current  is  broken,  the  magnetism  of  that  iron  instantly 
expires.  This  was  the  crowning  discovery  that  made  the 
electro-magnetic  telegraph  a  possibility.  Professor  Morse, 
the  inventor  of  that  telegraph,  had  no  share  in  making  that 
discovery,  nor  in  making  either  of  those  which  preceded  it. 
He  was  not  a  scientist.  His  profession  pertained  to  the 
fine  arts,  and  not  to  those  commonly  called  useful.  Being, 
however,  a  gentleman  of  reading,  he  was  somewhat  con- 
versant with  the  principal  known  laws  of  electricity  and 
electro-magnetism,  and  when  he  found  his  knowledge 
deficient  he  resorted  to  those  still  better  informed  than 
himself.  During  an  ocean  voyage  in  1832  he  conceived  the 
invention,  which  he  completed  in  1837,  patented  in  1840, 
and  embodied  in  1844  in  a  working  telegraph  from  Wash- 
ington to  Baltimore.  Morse  was  as  justly  entitled  to  a 
patent  for  that  invention  as  he  would  have  been  had  he 

1  O'Reilly  v.  Morse,  15  Howard,  112,  1853;  Morton  v.  Infirmary,  5 
Blatch.  116,  1862. 


4  THE   SUBJECTS   OF    PATENTS.  [CHAP.  I. 

been  the  discoverer  of  all  the  laws  of  nature  which  it  util- 
ized. On  the  other  hand,  Stephen  Gray,  had  he  lived  in 
the  time  and  in  the  country  of  Morse,  would  not  have  been 
entitled  to  a  patent  for  his  discovery,  splendid  as  it  was, 
because  what  he  made  known  was  neither  an  art,  a  machine, 
a  manufacture,  nor  a  composition  of  matter ;  and  because, 
to  have  given  him  an  exclusive  right  to  the  electric  current 
would  have  been  to  discourage  and  not  to  promote  the 
progress  of  science  and  useful  arts.  It  would,  have  been 
to  prohibit  all  others,  during  the  life  of  that  patent,  from 
using  any  electric  telegraph  or  telephone,  should  any  be 
invented.  It  would  have  been  to  prohibit  man  from  utiliz- 
ing one  of  the  laws  of  God. 

§  3.  The  word  "art"  also  has  a  narrower  meaning  in  the 
patent  laws  than  it  has  in  the  dictionaries.  In  the  latter 
its  signification  is,  "the  use  of  means  to  produce  a  result." 
In  the  patent  laws  it  covers  only  a  certain  limited  meaning 
of  the  word  process.1  The  common  meaning  of  this  latter 
word  is  "  an  operation  performed  by  rule  to  produce  a  re- 
sult." One  instance  of  such  a  process  is  the  mixing  of 
crude  India  rubber  with  sulphur,  and  then  subjecting  the 
mixture  to  a  high  degree  of  heat,  thereby  producing  a  new 
and  useful  composition  of  matter :  a  composition  which  will 
be  soft  India  rubber  if  the  proportion  of  the  sulphur  to  the 
crude  rubber  is  one  part  to  five,  and  will  be  hard  India 
rubber  if  the  two  ingredients  are  equal  in  weight.  Another 
process  is  the  planing  of  boards  in  a  planing-machine. 
Both  of  these  processes  are  arts  in  the  dictionary  sense  of 
that  word.  The  first  produces  its  result  by  chemical  action 
and  the  action  of  heat.  The  second  produces  its  result 
solely  by  the  action  of  a  machine.  Because  of  this  differ- 
ence, the  first  is  a  patentable  process,  while  the  second  is 
not.  This  distinction  was  announced  and  applied  by  the 
Supreme  Court  thirty  years  ago,  and  has  since  been  en- 
forced by  Judge  WHEELEK,  and  recognized  by  Judges  WAL- 
LACE, BLODGETT,  and  LOWELL. 

1  Telephone  Cases,  126  U.  S.  532,  1888. 


CHAP.  I.]  THE   SUBJECTS  OF   PATENTS.  5 

§  4.  In  Corning  v.  Burden '  it  appears  that  Henry  Burden 
obtained  a  patent,  in  the  specification  of  which  he  stated 
that  he  had  invented  an  "  improvement  in  the  process  of 
manufacturing  iron,"  and  described  two  machines,  both  of 
them  contrived  by  him,  and  either  of  them  capable  of  pro- 
ducing upon  puddler's  balls  the  effect  contemplated,  when- 
ever such  balls  were  caused  to  pass  through  such  machine. 
That  effect  was  the  compacting  of  the  balls  by  pressure 
into  the  form  of  blooms.  Burden  was  the  first  to  do  that 
by  machinery,  though  it  had  long  been  done  by  hand. 
The  court  below  instructed  the  jury,  in  substance,  that  the 
patent  was  for  the  process  of  converting  puddler's  balls 
into  blooms,  by  continuous  pressure  and  rotation  of  the 
balls  between  converging  surfaces,  and  that  any  machine 
which  would  perform  that  work  by  that  process  would 
infringe  that  patent.  The  case  turned  in  the  Supreme 
Court  on  the  question  of  the  soundness  of  that  instruction. 
That  court  decided  that  instruction  to  have  been,  erroneous, 
and  therefore  reversed  the  judgment  of  the  court  below. 
As  the  reason  for  its  decision,  the  Supreme  Court  an- 
nounced that  processes  which  consist  only  in  the  use  of 
machinery  are  not  patentable,  and  that  all  other  methods 
of  producing  useful  results  are  patentable  as  processes, 
they  being  such  processes  as  are  covered  by  the  word  "  art " 
in  the  statute.  The  court  supported  the  first  of  these  doc- 
trines by  showing  that  a  patent  for  a  process  performed  by 
a  machine  would  really  be  a  patent  for  its  function  or  effect, 
and  would  therefore  prohibit  the  use  of  subsequent,  differ- 
ent, and  better  machines  for  performing  the  same  function 
or  producing  the  same  effect.  Such  a  patent,  if  granted 
and  sustained,  would  bar  all  subsequent  inventions  in  the 
same  department  of  machinery,  until  such  time  as  it  might 
expire.  It  would  therefore  obstruct  the  progress  of  a  use- 
ful art  and,  in  so  doing,  would  contravene  the  spirit  and 
the  purpose  of  the  Constitution  and  the  statute.  Accord- 
ingly the  court  said,  that  "  it  is  well  settled  that  a  man  can- 
not have  a  patent  for  the  function  of  a  machine." 

1  Corning  r>.  Burden,  15  Howard,  267,  1853. 


6  THE    SUBJECTS   OF    PATENTS.  [CHAP.   I. 

§  5.  In  MacKay  v.  Jackman '  it  appears  that  tlie  patentee 
invented  a  machine  for  sewing  together  the  soles  and  uppers 
of  all  kinds  of  boots  and  shoes,  and  obtained  a  patent  for 
that  machine  in  July,  1858,  and  obtained  a  patent  for  the 
process  of  using  that  machine  in  August,  1860.  Suits  were 
brought  against  Jackman  and  others  for  using  specimens 
of  that  machine  after  the  expiration  of  the  machine  patent, 
but  before  the  expiration  of  the  patent  for  the  process. 
Judge  WHEELER,  however,  dismissed  the  bills,  and  cited 
Corning  v.  Burden  to  support  his  opinion,  that  a  patent  for 
a  process  of  using  a  machine  is  void.  To  have  held  the 
contrary  would  have  enabled  the  patentee  to  possess  a 
monopoly  of  his  invention  for  more  than  twenty-three  years 
instead  of  for  twenty-one. 

In  New  v.  Warren 2  the  bill  was  based  on  a  patent  for  a 
tank  to  hold  asphaltic  cement,  and  on  a  patent  for  the  pro- 
cess of  using  that  tank.  Judge  WTHEELEB  held  the  latter 
patent  to  be  invalid,  saying,  "For  this  mere  operation  of 
the  machine,  it  does  not  seem  that  there  can  be  a  patent, 
in  addition  to  a  patent  on  the  machine." 

In  Brainard  v.  Gramme 3  the  patent  had  two  claims  cov- 
ering a  machine  for  washing  shavings,  and  two  other  claims 
for  the  washing  of  shavings  by  that  machine.  Judge 
WALLACE  held  the  latter  to  be  entirely  inoperative,  and  in- 
deed the  complainant  himself  seems  to  have  arrived  at  a 
knowledge  of  the  law  on  that  point,  for  he  voluntarily  pro- 
posed to  file  a  disclaimer  as  to  the  alleged  process. 

In  Goss  v.  Cameron4  the  patent  purported  to  cover  a 
method  of  using  a  printing-press,  but  Judge  BLODGETT  held 
that  such  a  claim,  if  literally  construed,  would  be  void,  and 
that,  in  order  to  stand,  it  must  be  construed  to  cover  the 
particular  machinery  described,  and  not  to  cover  the  pro- 
cess of  using  such  machinery. 

In  Hatch  v.  Mofiitt 5  the  complainant  sued  on  a  patent 

1  MacKay  v.   Jackman,   12  Fed.      Rep.  621,  1882. 

Rep.  615,  1882.  *  Goss  «.  Cameron,  14  Fed.  Rep. 

2  New  «.   Warren,  22  Off.   Gaz.      576, 1882. 

587, 1882.  5  Hatch  0   Moffitt,  15  Fed.  Rep. 

8  Brainard  v.   Gramme,   12  Fed.      253,  1883. 


CHAP.  I.]  THE   SUBJECTS   OF    PATENTS.  7 

which  covered  a  machine  for  crimping  heel  stiffenings  of 
boots  and  shoes.  Among  the  claims  of  that  patent  was 
one  for  the  process  of  using  that  machine.  Judge  LOWELL 
held  that  claim  to  be  void,  because  it  purported  to  cover 
the  mode  of  operating  the  machine,  and  not  to  cover  any 
particular  mechanism. 

In  Reay  v.  Raynor1  the  patent  had  numerous  claims,  all 
but  one  of  which  covered  a  corresponding  number  of  parts 
of  a  machine  for  manufacturing  envelopes.  Some  of  those 
parts  operated  to  feed  the  blanks  under  the  table  wrhich 
supported  the  gum  box,  instead  of  over  it.  The  fifth 
claim  covered  that  operation,  on  the  theory  that  feeding 
under  the  gum  box  was  new.  But  Judge  WHEELER  held 
the  operation  to  be  uupatentable. 

§  6.  In  pursuance  of  the  rule  established  in  Corning  v. 
Burden,  and  followed  in  the  several  later  cases  explained 
in  the  last  section,  the  word  "  process  "  will  not  hereafter 
in  this  book  be  used  in  its  generic  sense  of  "  an  operation 
performed  py  rule  to  produce  a  result,"  but  it  will  be  used 
only  in  its  narrower  patent  law  meaning  of  an  operation 
performed  by  rule,  to  produce  a  result,  and  which  is  or 
may  be  performed  otherwise  than  by  any  particular  ma- 
chinery, or  is  performed  by  means  not  solely  mechanical.4 
All  processes 'which  come  within  this  definition  are  patent- 
able,  provided  they  are  products  of  invention,  and  are  new 
and  useful.'  That  all  processes,  and  all  machines,  manu- 
factures, and  compositions  of  matter,  must  possess  those 
three  requisites  in  order  to  be  proper  subjects  of  patents, 
will  be  explained  at  large  in  the  next  three  chapters  of  this 
book. 

§  7.  It  was  shown  in  Section  2  that  the  discovery  of  a 
law  of  nature  is  not  patentable.  That  which  was  so  de- 
nominated in  that  section  is  often  spoken  of  as  a  "  prin- 

1  Reay  v.  Raynor,  19  Fed.  Rep.  *  Fermentation  Co.  v.  Maus,  122 

310,  1884.  U.  S.  427,  1886;  Telephone  Cases, 

9  Exparte  Herr,  41  Off.  Gaz.  465,  186  U.  S.  533,  1888;  Celluloid  Mfg. 

1887;  Ex  parte  Young,  46  Off.  Gaz.  Co.  v.  American  Zylonite  Co.  31 

1636,  1888.  Fed.  Rep.  904,  1887. 


8  THE   SUBJECTS  OF   PATENTS.  [CHAP.  I. 

ciple,"  and  at  other  times  as  a  "  scientific  principle,"  and 
again  as  a  "  scientific  fact,"  and  still  again  as  a  "  fact  in 
nature."  By  whatever  name  it  is  called,  it  is  certain  that 
the  thing  referred  to  is  not  a  material  substance.  It  is  not 
to  be  apprehended  by  the  sense  of  touch,  but  when  discov- 
ered finds  a  lodgment  in  the  mind  as  a  mental  conception 
only.  So  also,  a  process  is  not  a  substance  which  can  be 
handled.  It  is  seen  only  by  noting  its  constituent  acts  as 
they  are  being  performed.  Principles  and  processes  are 
therefore  alike  in  that  they  are  intangible,  and  being  so, 
they  have  sometimes  been  mistaken  for  each  other. 

Whether  a  given  patent  is  one  for  a  process  or  one  for  a 
principle,  is  a  question  upon  which  its  validity  may  wholly 
depend.  It  is  therefore  important  to  ascertain  what  rule 
governs  the  decision  of  such  questions  :  to  ascertain  pre- 
cisely wherein  consists  the  difference  between  a  patent  for 
a  principle  and  a  patent  for  a  process.  Any  search  for  that 
distinction  made  during  the  first  half  of  this  century  was 
necessarily  a  speculative  one,  for  lack  of  authoritative  ad- 
judged cases  from  which  to  reason.  Now,  however,  when 
engaged  in  an  investigation  of  the  point,  we  have  recourse 
to  five  very  instructive  Supreme  Court  decisions.  The  pro- 
per method  of  conducting  the  inquiry  seems  to  be,  to  first 
set  down  the  important  relevant  points  of  each  of  those 
cases,  and  then  to  ascertain  what  doctrine  is  consistent  with 
them  all.  Such  hypothetical  rules  as  are  found  to  be  incon- 
sistent with  either  of  the  cases  may  safely  be  rejected  as 
not  true  rules  ;  but  if  some  one  proposition  is  found  to  log- 
ically underlie  all  five  decisions,  it  is  safe  to  believe  that 
the  Supreme  Court  will  never  depart  from  it. 

§  8.  In  McClurg  v.  Kingsland '  it  appears  that  some 
method  was  long  sought,  by  means  of  which  rollers  or 
cylinders  could  be  so  cast  that  the  metal,  when  introduced 
into  the  moulds,  would  be  given  a  rotary  motion,  to  the  end 
of  throwing  the  flog  or  dross  into  the  centre  instead  of  the 
circumference  of  the  casting.  The  fact  that  rotary  motion 

1  McClurg  v.  Kingsland,  1  Howard,  202,  1843. 


CHAP.  I.]  THE   SUBJECTS  OF  PATENTS.  9 

would  so  result  was  an  understood  law  of  nature,  an  under- 
stood operation  of  centrifugal  force.  The  problem  was  to 
produce  such  a  motion  more  conveniently  and  more  uni- 
formly than  by  stirring  the  liquid  metal  with  a  circular 
movement  of  an  implement  inserted  therein.  That  problem 
was  solved  in  1834  by  James  Harley,  a  workman  in  a 
foundry  in  Pittsburg,  Pennsylvania.  He  discovered  that 
the  rotary  motion  desired  could  be  imparted  to  melted 
metal  by  injecting  that  metal  into  a  mould  diagonally  in- 
stead of  perpendicularly  or  horizontally.  A  patent  was 
granted  to  him  in  1835,  for  "  an  improvement  in  the  mode 
of  casting  chilled  rollers  and  other  metallic  cylinders  and 
cones."  Litigation  arose  on  the  patent,  and  coming  before 
the  Supreme  Court  it  was  held  to  be  a  patent  for  a  process. 

§  9.  In  O'Reilly  v.  Morse '  it  appears,  as  also  it  appears 
in  Section  2  of  this  book,  that  Professor  Morse  was  not  the 
discoverer  of  either  of  the  laws  of  nature  which  he  utilized 
in  his  telegraph.  He  did,  however,  invent  a  machine  by 
means  of  which  those  laws  could  be  made  to  carry  informa- 
tion to  a  distant  place.  That  machine  was  dependent  for 
success  on  several  laws  of  nature,  and  lacking  any  one  of 
them  it  would  have  failed  of  its  result.  The  chief  of  these 
was  the  electric  current  discovered  by  Gray.  The  one  next 
in  importance  was  that  discovered  by  (Ersted  and  his  con- 
temporaries, and  known  in  natural  philosophy  as  electro- 
magnetism.  The  eighth  claim  of  Morse's  patent  was  con- 
strued, by  the  Supreme  Court,  to  be  one  for  the  use  of  the 
electric  current,  for  marking  intelligible  signs  at  any  dis- 
tance. The  Supreme  Court  held  that  claim  to  be  void. 

§  10.  In  Mo  wry  v.  Whitney,  *  the  following  matters  are 
set  forth.  It  had  long  been  known  that  sudden  cooling  of 
very  hot  cast-iron  makes  it  hard,  but  brittle.  On  the  other 
hand,  the  slow  cooling  of  very  hot  cast-iron  was  known  to 
make  it  soft,  but  tough.  This  is  annealing.  Cast-iron  car- 
wheels  require  hardened  peripheries  and  annealed  hubs 

1  O'Reilly  v.  Morse,  15  Howard,  s  Mowry  «.  Whitney,  14  Wallace, 
112,  1853.  620,  1871. 


10        «  THE   SUBJECTS  OF   PATENTS.  [CHAP.  I. 

and  plates,  because  the  first  have  to  endure  friction  and  the 
last  two  have  to  endure  strain.  The  early  attempts  to  sub- 
ject car-wheels  to  both  hardening  and  annealing  produced 
a  weak  and  worthless  article,  resulting  from  the  law  of  the 
expansion  and  contraction  of  metals.  The  peripheries  of 
the  wheels  were  hardened  by  chilling  them,  this  chilling 
consisting  in  surrounding  the  moulds  in  which  the  wheels 
were  cast  with  a  circle  of  iron,  and  with  only  a  thin  film  of 
sand  between  it  and  the  peripheries  of  the  wheels.  This 
iron  band  being  a  rapid  conductor  of  heat  caused  the  peri- 
pheries of  the  wheels  to  suddenly  cool,  and  thus  be  hard- 
ened, while  the  plates  and  hubs,  being  inclosed  in  a  thick 
mass  of  sand,  cooled  very  slowly,  and  were  thus  annealed. 
The  sudden  cooling  of  the  rims  of  the  wheels,  however, 
materially  contracted  their  circumference,  and  that  con- 
traction forced  the  still  hot  plates  to  contract  their  diameter. 
Then,  when  the  plates  came  to  cool  down,  they  themselves 
contracted  still  more,  and  thus  tended  to  break  away  from 
the  rims,  which,  having  entirely  cooled  some  time  before, 
had  no  more  contracting  to-  do.  Wheels  so  made  were 
therefore  weak. 

In  this  condition  of  affairs,  Asa  Whitney,  of  Philadelphia, 
discovered  in  1848  that  hardness  once  given  to  iron  will 
not  be  destroyed  or  seriously  impaired  by  the  immediate 
reheating  of  the  iron  and  its  subsequent  very  slow  cooling, 
and  he  also  conceived  a  process  by  means  of  which  that-law 
of  nature  could  be  utilized  to  obviate  the  evil  explained  in 
the  last  paragraph.  That  process  consisted  in  taking  the 
wheels  from  the  moulds  very  soon  after  their  rims  were 
chilled,  and  in  putting  them  immediately  into  a  chamber  or 
furnace  which  had  previously  been  heated  about  as  hot  as 
the  then  heat  of  the  wheels,  and  thereupon  in  gradually 
raising  the  temperature  of  all  parts  of  the  interior  of  the 
chamber  or  furnace  and  its  contents  to  an  equally  high 
point,  and  finally  in  causing  all  parts  of  the  wheels  to  cool 
with  equal  slowness.  In  accordance  with  the  law  of  nature 
discovered  by  Whitney,  it  turned  out  that  the  third  stage 
of  this  procesc  did  not  destroy  or  seriously  impair  the  hard- 


CHAP.  L]  THE   SUBJECTS  OF  PATENTS.  11 

ness  of  the  peripheries  of  the  wheels  which  were  subjected 
to  it.  It  did,  however,  cause  the  peripheries  of  the  wheels 
to  re-expand  in  circumference,  and  in  so  doing  to  stretch 
the  still  hot  and  ductile  plates  back  to  nearly  the  same 
diameter  as  that  they  had  before  the  rims  were  contracted 
by  the  chill.  The  fourth  stage  of  the  process  then  served 
to  contract  all  parts  of  the  wheels  harmoniously,  and  the 
result  of  the  whole  process  was  to  remedy  the  evil  at  which 
it  was  aimed.  Mr.  Whitney  obtained  a  patent  for  his  in- 
vention, and  the  Supreme  Court  held  it  to  be  a  patent  for 
a  process,  and  held  it  to  be  valid. 

§  11.  The  case  of  Tilghman  v.  Proctor '  discloses  the  fol- 
lowing facts  :  The  celebrated  French  chemist,  Chevreul, 
discovered  in  1813  that  fat  is  a  regular  chemical  compound, 
consisting  of  glycerine  and  three  kinds  of  fat  acids.  He 
also  discovered  that  fat  can  be  separated  into  those,  its 
constituent  elements,  by  causing  them  to  severally  unite 
with  an  atomic  equivalent  of  water.  In  1853,  Richard  A. 
Tilghman,  a  Philadelphia  chemist,  discovered  that  those 
elements  of  fat  can  be  caused  so  to  unite  with  an  atomic 
equivalent  of  water  by  mixing  the  fat  with  water,  and  by 
thereupon  subjecting  the  mixture  to  a  high  degree  of  heat, 
and  to  such  a  degree  of  pressure  as  will  prevent  the  conver- 
sion of  the  water  into  steam.  In  1854  Mr.  Tilghman  ob- 
tained a  patent,  in  the  specification  of  which  he  announced 
his  discovery,  and  described  a  suitable  apparatus  in  which 
to  utilize  that  discovery  in  connection  with  the  discoveries 
of  Chevreul,  and  claimed  "  the  manufacturing  of  fat  acids 
and  glycerine  from  fatty  bodies,  by  the  action  of  water  at  a 
high  temperature  and  pressure."  The  Supreme  Court  held 
that  patent  to  be  one  for  a  process,  and  to  be  valid. 

§  lla.  The  Telephone  Cases  *  set  forth  the  following  fun- 
damental facts  :  It  has  been  known  for  centuries  that  articu- 
late sounds  can  be  reproduced  at  a  distance  from  the  place 
where  they  are  originally  uttered,  by  means  of  two  thin 

1  Tilghman  t>.  Proctor,  103  U.  8.          8  Telephone  Cases,  126  U.  S.  531, 

707,  1880.  1888. 


12  THE   SUBJECTS  OF   PATENTS.  [CHAP.  I. 

diaphragms,  made  of  metal  or  membrane,  and  attached  at 
their  centres  to  the  respective  ends  of  a  tightly  drawn  cord 
or  wire ;  and  that  when  a  person  speaks  near  and  toward 
one  of  those  diaphragms,  the  sound  vibrations  which  are 
produced  by  his  voice  cause  that  diaphragm  to  vibrate 
correspondingly ;  and  that  those  corresponding  vibrations 
are  transmitted,  along  the  cord  or  wire,  to  the  other  dia- 
phragm, and  cause  it  also  to  vibrate  correspondingly ;  and 
that  the  second  diaphragm  thus  vibrating  causes  corre- 
sponding vibrations  in  the  air  adjacent  thereto  ;  and  that 
when  those  vibrations  strike  upon  the  drum  of  the  ear  of  a 
listener,  they  cause  him  to  hear  what  was  spoken  toward 
the  first  diaphragm.  Instruments  like  this  are  called  string 
telephones  ;  and  they  utilize  that  law  of  nature  which  causes 
such  diaphragms  as  those  employed  therein,  to  copy  and 
to  transmit  the  vibrations  of  air  which  occur  adjacent  there- 
to. It  has  been  known  ever  since  1831,  when  it  was  dis- 
covered by  Michael  Faraday,  that  when  an  armature  is 
moved  in  front  of  an  electro-magnet  which  is  being  mag- 
netized by  an  electric  current  passing  through  its  coil,  the 
motion  modifies  the  current,  and  that  those  modifications 
correspond  to  the  movements  of  the  armature  in  duration, 
in  direction,  and  in  strength ;  and  it  has  long  been  known 
that  the  electric  current  thus  modified  will  cause  corre- 
spondingly modified  movements  in  the  armature  of  another 
electro-magnet  through  the  coil  of  which  the  electric  cur- 
rent thus  modified  is  also  passing.  At  this  stage  of  knowl- 
edge of  the  relevant  laws  of  nature,  Alexander  Graham  Bell 
invented  his  telephone.  That  invention  consisted  in  mount- 
ing two  such  diaphragms  as  those  of  the  string  telephone, 
upon  two  such  armatures  as  those  described  in  the  last 
sentence,  and  thus  enabling  one  of  those  armatures  to  trans- 
mit, and  the  other  one  to  receive,  such  minute  and  exceed- 
ingly variant  vibrations  as  those  caused  in  the  air  by  the 
human  voice ;  and  it  also  consisted  in  the  process  of  trans- 
mitting sounds  telegraphically,  by  causing  electrical  un- 
dulations, similar  in  form  to  the  vibrations  of  the  air 
caused  by  the  sounds,  to  occur  upon  the  conducting  wire. 


CHAP.  I.]  THE  SUBJECTS  OF  PATENTS.  13 

Mr.  Bell  obtained  a  patent  for  that  invention,  in  1876,  and 
the  Supreme  Court  held  it  to  be  a  patent  for  a  process,  as 
well  as  for  an  apparatus,  and  held  the  process  claim  to  be 
valid. 

§  12.  The  last  five  sections  present  five  cases,  covering  five 
subject-matters  of  claim,  four  of  which  the  Supreme  Court 
held  to  be  patentable  processes,  and  one  of  which  that 
tribunal  held  to  be  an  i.npatentable  principle,  or  law  of  na- 
ture. To  learn  the  controlling  distinction  between  a  claim 
for  a  process  and  a  claim  for  a  principle,  it  is  therefore 
sufficient  to  ascertain  precisely  wherein  consists  the  con- 
trolling difference  between  the  eighth  claim  of  Morse,  on  the 
one  hand,  and  the  claims  of  Harley,  Whitney,  Tilghman, 
and  Bell  on  the  other. 

That  difference  does  not  consist  in  the  fact  that  Harley, 
Whitney,  and  Tilghman  each  discovered  one  of  the  laws 
of  nature  which  he  utilized,  while  the  laws  which  Morse 
utilized  were  discovered  by  others  ;  because  the  Supreme 
Court  did  not  rest  its  decision  in  the  Morse  case  on  the 
ground  that  he  was  not  the  discoverer  of  the  electric  cur- 
rent, but  on  the  ground  that,  being  a  power  in  nature,  it  was 
not  patentable  to  any  person.  Neither  does  that  difference 
consist  in  anything  outside  of  the  use  of  laws  of  nature,  be- 
cause all  five  claims  extended  to  accomplishing  results  by 
means  of  such  law  or  laws,  regardless  of  the  particular  appa- 
ratus used  in  the  respective  processes.  The  fact  that  diagonal 
injection  of  melted  metal  into  a  cylindrical  mould  will  give 
that  metal  a  rotary  motion  ;  the  fact  that  moderate  reheat- 
ing of  a  car-wheel  will  not  destroy  its  chill ;  the  fact  that 
very  hot  water  will  separate  the  elements  of  fat ;  the  fact 
that  mechanical  motion  may  cause  electrical  undulations  ; — 
every  one  of  these  is  just  as  truly  a  law  of  nature,  just  as 
truly  a  "  principle,"  as  is  the  fact  of  the  electric  current. 
Nor  was  the  apparatus  described  by  Harley,  Whitney, 
Tilghman,  and  Bell,  respectively,  for  the  purpose  of  utiliz- 
ing the  first  four  of  these  laws,  respectively,  claimed  as 
their  sole  respective  inventions,  any  more  than  the  particu- 


14  THE    SUBJECTS   OF   PATENTS.  [CHAP.  I. 

lar  telegraph  described  by  Morse  was  made  essential  to  his 
eighth  claim. 

§  13.  There  is  apparently  but  one  radical  distinction  be- 
tween the  claims  of  the  four  patents  of  Harley,  Whitney, 
Tilghman,  and  Bell,  on  the  one  hand,  and  the  eighth  claim 
of  Morse  on  the  other.  That  distinction  is  as  follows. 
Harley,  Whitney,  Tilghman,  and  Bell  each  produced  a  pro- 
cess which  utilized  several  laws  of  nature,  and  each  of  them 
claimed  the  entire  process  he  produced,  including  the  use 
of  all  those  laws  in  the  order  and  method  described.  Morse 
also  made  an  invention  which  utilized  several  laws  of  na- 
ture, but  instead  of  claiming  his  combined  and  methodical 
use  of  all  those  laws,  his  eighth  claim  was  Construed  as 
confined  to  one  of  them  alone.  This  difference,  taken  in 
connection  with  the  fact  that  the  Supreme  Court  sustained 
the  patents  of  Harley,  Whitney,  and  Tilghman,  and  over- 
threw the  eighth  claim  of  Morse,  and  taken  in  connection 
with  the  fact  that  no  other  relevant  and  important  differ- 
ence can  be  detected,  points  to  the  soundness  of  the  doc- 
trines stated  in  the  next  section,  and  illustrated  in  the  sec- 
tion following  that. 

§  14.  A  patent  for  a  process  is  a  patent  for  the  described 
combined  use  of  all  the  laws  of  nature  utilized  by  that  pro- 
cess. A  patent  for  a  principle  is  a  patent  for  one  only  of 
the  laws  of  nature  used  in  a  process.  If  a  patent  for  a 
principle  were  granted  and  sustained,  it  would  be  much 
broader  than  a  patent  for  a  process,  because  it  would  cover 
all  processes  which  aim  at  the  same  result,  and  which  use 
the  particular  law  of  nature  covered  by  the  patent  for  a 
principle,  no  matter  in  what  combination  with  other  laws. 
A  patent  for  a  process,  on  the  other  hand,  covers  only  its 
own  method  of  using  all  of  the  laws  of  nature  which  it 
utilizes.  To  grant  and  sustain  a  patent  for  a  principle, 
would  induce  an  inventor  to  guess  which  of  the  laws  of  na- 
ture used  in  his  process  will  always  be  found  indispensable, 
and  guessing  rightly,  would  enable  him,  by  claiming  that 
particular  law,  to  suppress  all  subsequent  processes  using  it: 
to  suppress  all  subsequent  invention  in  the  same  field  until 


CHAP.  I.]  THE  SUBJECTS  OF  PATENTS.  15 

such  time  as  his  patent  might  expire.  A  patent  for  a  pro- 
cess, on  the  contrary,  leaves  the  field  open  to  ingenious  men 
to  invent  and  to  use  other  processes  using  part  of  the  laws 
used  by  the  patented  process,  or  using  all  of  them  in  other 
combinations  and  methods. 

§  15.  An  illustration  of  the  doctrines  of  the  last  section 
exists  in  the  matter  of  the  eighth  claim  of  Morse,  when  con- 
sidered in  connection  with  other  telegraphs  than  his.  The 
subject  of  that  claim  was  construed  to  be  the  use  of  the 
electric  current  for  marking  signs  at  any  distance.  The 
electric  current  is  one  thing,  and  electro-magnetism  is  an- 
other. The  first  was  discovered  by  Gray,  in  1729,  but  the 
existence  of  the  latter  was  not  known  till  ninety-one  years 
later.  Morse  used  both  in  his  telegraph,  but  his  eighth 
claim  was  construed  to  cover  the  electric  current  with  or 
without  the  other.  But  without  electro-magnetism  Morse's 
telegraph  would  not  work.  After  Morse  came  Bain,  who 
invented  a  telegraph  which  used  the  electric  current,  but 
did  not  use  electro-magnetism.  Its  recording  apparatus 
operated  electro-chemically,  and  not  electrc-magnetically 
like  that  of  Morse.  Bain's  telegraph  could  work  with  a 
much  feebler  current  than  could  that  of  Morse,  and  there- 
fore the  relay  batteries  of  the  latter  were  not  wanted.  The 
two  telegraphs  had  nothing  in  common  except  that  both 
used  the  electric  current.  If  the  eighth  claim  of  Morse  had 
been  sustained  as  construed,  it  would  have  covered  Bain's 
and  every  other  electric  telegraph  capable  of  marking  signs 
at  a  distance.  On  the  other  hand,  had  that  claim  been  so 
drawn  as  to  cover  the  combined  use  of  all  the  laws  of 
nature  utilized  by  the  telegraph  of  Morse,  when  used  as  he 
used  them,  then  it  would  have  been  a  claim  for  a  process, 
and  not  being  obnoxious  to  either  of  the  weighty  objections 
which  are  set  forth  in  the  opinion  of  the  Supreme  Court,  it 
would  doubtless  have  been  sustained  by  that  tribunal.  Ill 
that  case,  however,  it  would  not  have  been  infringed  by 
the  telegraph  of  Bain,  nor  by  any  other  which,  like  his, 
dispensed  with  one  or  more  of  the  laws  of  nature  neces- 
sary to  the  process  of  Morse. 


16  THE   SUBJECTS   OF    PATENTS.  [CHAP.  I. 

§  16.  Machines  and  improvements  of  machines  constitute 
the  subjects  of  a  majority  of  the  American  patents  hereto- 
fore granted.  A  machine  is  a  combination  of  moving  me- 
chanical parts,  adapted  to  receive  motion,  and  to  apply  it 
to  the  production  of  some  mechanical  result  or  results. 
All  the  parts  of  a  machine  may  be  old  while  the  machine 
as  a  whole,  and  also  the  sub-combinations  which  are  con- 
tained therein,  are  proper  subjects  of  patents.1  An  im- 
provement of  a  machine  may  consist  of  an  addition  thereto, 
or  in  a  subtraction  therefrom,  or  in  substituting  for  one  or 
more  of  its  parts  something  different,  or  in  so  rearranging 
its  parts  as  to  make  it  work  better  than  before.  Whether 
or  not  a  given  improvement  is  a  patentable  one  will  always 
depend  upon  several  considerations.  In  order  to  be  so  it 
must,  first  of  all,  be  an  invented  improvement,*  as  distin- 
guished from  one  which  is  the  product  of  mere  mechanical 
skill  in  construction.  This  point  of  law  is  explained  at 
large  in  the  next  chapter.  So  also  it  is  explained  in  the 
chapter  on  infringement  what  improvements  can  be  used, 
and  what  improvements  cannot  be  used,  without  infringing 
the  patents  for  the  machines  improved  upon,  if  the  latter 
happen  to  be  patented.  It  is  enough  to  say  in  this  chapter, 
that  patents  are  not  void  merely  because  they  cover  pro- 
cesses or  things  which  include  old  inventions,3  and  that  an 
improvement  may  or  may  not  be  an  invention,  and  in 
either  case  may  or  may  not  be  an  infringement  of  a  patent 
covering  the  machine  improved. 

§  17.  The  word  "  manufacture  "  has  a  much  narrower 
signification  in  the  American  patent  laws  than  it  has  in 
those  of  England.  In  the  latter  it  includes  everything 
made  by  the  hand  of  man,  and  also  includes  processes  of 
manufacture.  According  to  the  former,  processes  are  pat- 
entable because  they  are  arts,  while  some  of  the  things 
made  by  the  hand  of  man  are  patentable  as  machines,  and 
some  others  are  patentable  as  compositions  of  matter,  and 

1  Cantrell  v.  Wallick,  117  U.  S.      Arthur's  Patent  Cases,  53,  1844. 
694,  1885.  8  Cantrell  v.  Wallick,  117  U.  S. 

*  Cochrane  v.  Waterman,  1  Me-      694,  1885. 


CHAP.   L]  THE  SUBJECTS  OF   PATENTS.  17 

some  others  are  patentable  as  designs.  Whatever  is  made 
by  the  hand  of  man,  and  is  neither  of  these,  is  a  manu- 
facture, in  the  sense  in  which  that  word  is  used  in  the 
American  patent  laws.  The  term  should  be  held  to  justify 
a  patent  for  the  invention  of  a  new  and  useful  human  habi- 
tation, or  a  new  and  useful  improvement  of  such  a  struc- 
ture. This  statement  is  ventured,  notwithstanding  the  face- 
tious obiter  dictum  of  Justice  GRIEB  in  the  jail  case.1 

§  18.  The  phrase  "  composition  of  matter,"  as  used  in 
the  statutes,  covers  all  compositions  of  two  or  more  sub- 
stances. It  includes,  therefore,  all  composite  articles, 
whether  they  be  the  result  of  chemical  union,  or  of  mechan- 
ical mixture,  and  whether  they  be  fluids,  powders,  or 
solids.  To  be  a  proper  subject  of  a  patent,  a  composition 
of  matter  must,  like  a  process,  a  machine,  or  a  manufacture, 
be  able  to  endure  the  relevant  tests  of  invention,  novelty, 
and  utility,  which  are  stated  in  the  next  three  chapters  of 
this  book. 

§  19.  The  distinction  between  a  machine  and  a  manu- 
facture cannot  be  so  stated  that  its  application  to  every 
case  would  be  clear  and  satisfactory  to  every  mind.  The 
same  remark  is  true  of  the  distinction  between  manufac- 
tures and  compositions  of  matter.  In  most  instances,  how- 
ever, when  something  is  invented  by  the  mind  and  con- 
structed by  the  hand  of  man,  its  classification  under  some 
one  of  these  heads  is  sufficiently  obvious.  If  an  inventor 
is  certain  that  his  invention  belongs  to  one  or  another  of 
the  three  classes  of  things,  but  is  uncertain  as  to  which,  no 
evil  need  result  from  the  doubt.  No  inventor  needs  to 
state  or  to  know  whether  the  thing  he  has  produced  is  a 
machine,  a  manufacture,  or  a  composition  of  matter,  pro- 
vided he  knows  that  it  is  one  or  the  other  of  these.  Seven- 
teen-year patents  may  be  lawfully  granted  for  a  thing  which 
falls  under  either  designation,  but  it  never  becomes  vitally 
important  to  determine  to  which  one  of  the  three  classes  a 
particular  thing  really  belongs. 

1  Jacobs  v.  Baker,  7  Wallace,  297,  1868. 


18  THE   SUBJECTS   OF   PATENTS.  [CHAP.   I. 

§  20.  Designs  are  patentable  under  Section  4929  of  the 
Revised  Statutes.  That  section  provides  that  any  person 
who,  by  his  own  industry,  genius,  efforts,  and  expense,  has 
invented  and  produced  any  new  and  original  design  for  a 
manufacture,  bust,  statue,  alto-relievo,  or  bas-relief,  any 
new  and  original  design  for  the  printing  of  woollen,  silk, 
cotton,  or  other  fabrics,  any  new  and  original  impression, 
ornament,  patent,  print,  or  picture  to  be  printed,  painted, 
cast,  or  otherwise  placed  on  or  worked  into  any  article  of 
manufacture,  or  any  new,  useful,  and  original  shape  or 
configuration  of  any  article  of  manufacture,  may,  subject  to 
certain  conditions  and  limitations  stated  in  the  statute,  ob- 
tain a  patent  therefor.  That  section  is  almost  a  literal 
transcript  of  Section  71  of  the  consolidated  Patent  Act  of 
1870,1  except  that  in  the  latter  the  word  "  pattern  "  is  found 
in  the  connection  in  which  the  word  "  patent "  is  printed  in 
Section  4929.  The  change  from  "  pattern  "  to  "  patent " 
was  doubtless  an  error  of  the  printers  of  the  Revised  Stat- 
utes. Those  statutes  were  enacted  as  printed,  and  not  as 
is  the  custom  with  shorter  edicts,  as  engrossed  in  writing. 
The  word  "patent"  is  meaningless  in  that  connection,  and 
patterns,  though  not  mentioned  in  the  section,  are  doubt- 
less covered  by  its  other  provisions. 

§  21.  In  like  manner  as  Section  4929  of  the  Revised 
Statutes  was  enacted  to  take  the  place  of  Section  71  of  the 
Patent  Act  of  1870,  the  latter  was  passed  to  take  the  place 
of  Section  11  of  the  Patent  Act  of  1861.'  The  Act  of  1870 
differed  from  its  predecessor  mainly  in  conferring  upon 
any  person  the  rights  to  design  patents  which  the  Act  of 
1861  gave  only  to  citizens  and  to  aliens  who,  having  resided 
one  year  in  the  United  States,  had  taken  an  oath  of  inten- 
tion to  become  citizens.  Section  11  of  the  Act  of  1861  was 
a  modification  of  Section  3  of  the  Patent  Act  of  1842,3  which 
latter  was  the  first  American  statute  authorizing  patents 
for  designs. 

1  16  Statutes  at  Large,  Ch.  230,  p.      248. 

209.  3  5  Statutes  at  Large,  Ch.  263,  p. 

2 12  Statutes  at  Large,  Ch.  88,  p.      543. 


CHAP.  I.]  THE   SUBJECTS  OF   PATENTS.  19 

§  22.  Section  4929,  like  all  three  of  its  predecessors,  pro- 
vided for  patents  for  a  certain  class  of  new,  useful,  and 
original  designs,  and  for  certain  other  classes  of  new  and 
original  designs,  thus  recognizing  the  fact  that  some  de- 
signs are  useful  as  well  as  ornamental,  while  others  have 
no  utility  except  to  please  the  eye  of  the  beholder.  It  is 
questionable  whether  the  framers  of  the  constitutional  pro- 
vision, relevant  to  encouragement  of  science  and  useful 
arts,  intended  to  provide  for  patents  for  designs  which  are 
useful  only  because  they  are  ornamental.  In  our  age,  how- 
ever, beauty  is  generally  believed  to  have  a  utility  of  its 
own,  and  patents  are  therefore  granted  and  sustained  for 
designs  which  are  useful  only  because  they  are  beautiful.1 

1  Theberath  v.  Trimming  Co.  15  Fed.  Rep.  250,  1883. 


CHAPTEE  II. 


INVENTION. 


23.  Invention  necessary  to  patent- 
ability. 

24.  Many   negative    rules,   but   no 
affirmative  rule,  for  determin- 
ing the  presence  or  absence  of 
invention. 

25.  Mere  mechanical  skill  is  not  in- 
vention. 

26.  Circumstances  indicating  differ- 
ence between  invention  and  me- 
chanical skill. 

27.  Excellence  of  workmanship  is 
not  invention. 

28.  Substitution  of  materials  is  not 
invention. 

29.  Exception  to  the  last  rule. 

30.  Enlargement  is  not  invention. 

31.  Change  of  degree  is  not  inven- 
tion. 

32.  Aggregation  is  not  invention. 

33.  Simultaneousness  of   action   is 
not  necessary  to  invention. 

34.  Duplication  is  not  invention. 

35.  Omission  is  not  generally  in- 
vention. 

36.  Substitution   of   equivalents  is 
not  invention. 

37.  New  combination,  without  new 


mode  of  operation,  is  not  inven- 
tion. 

38.  Using  old  thing  for  new  purpose 
is  not  invention. 

39.  Cases  to  which  the  last  rule  does 
not  apply. 

40.  Doubts   relevant   to  invention, 
when  otherwise  insoluble,  are 
solved  by  ascertaining  compar- 
ative utility. 

41.  Form. 

42.  Questions  of  invention  are  ques- 
tions of  fact. 

43.  Questions    of    invention   some- 
times investigated  in  the  light 
of  the  state  of  the  art. 

44.  Joint  and  sole  inventions. 

45.  How  made. 

46.  How  distinguished. 

47.  Suggestions  to  an  inventor. 

48.  Information  sought  by  an  in- 
ventor. 

49.  Mechanical  skill  not  necessary 
to  invention. 

50.  Sole  patent  to  one  joint  inventor 
is  void. 

51.  Joint  patent  to  sole  inventor  and 
another  is  void. 


§  23.  IT  has  been  shown  that  the  word  "  discovered,"  in 
Section  4886  of  the  Revised  Statutes,  has  the  meaning  of 
the  word  "  invented." '  It  follows  that  patents  are  grant- 
able  for  things  invented,  and  not  for  things  otherwise 


1  Section  2  of  this  book. 


20 


CHAP.  II.]  INVENTION.  21 

produced.  Novelty  and  utility  must  indeed  characterize 
the  subject  of  a  patent,  but  they  alone  are  not  enough  to 
make  anything  patentable ;  for  the  statute  provides  that 
things  to  be  patented  must  be  invented  things,  as  well 
as  new  and  useful  things.1  The  courts  have  therefore  de- 
clared that  not  all  improvement  is  invention,  and  entitled 
to  protection  as  such,  but  that,  to  be  thus  entitled,  a  thing 
must  be  the  product  of  some  exercise  of  the  inventive  fac- 
ulties.1 And  the  law  stated  in  this  section  applies  not  only 
to  processes,  machines,  manufactures,  and  compositions  of 
matter,  but  also  to  designs.3  But  a  patent  may  be  sus- 
tained for  an  invention  which  resided  in  a  theory,  without 
a  reduction  to  actual  practice,  at  the  time  the  patent  was 
granted,  if  that  theory  afterward  proves  to  be  correct,4  and 
also  where  the  correctness  of  the  theory  is  self-evident.6 

§  24.  The  abstract  rule  stated  in  the  last  section  is  as 
certainly  true  as  it  is  universally  just,  but  its  application  to 
particular  cases  cannot  be  made  without  the  guidance  of 
more  concrete  propositions.  In  delivering  an  opinion  of 
the  Supreme  Court,  in  January,  1885,  Justice  MATTHEWS 
used  some  language  which  may  be  thought  to  establish  an 
affirmative  rule  by  which  to  determine  the  presence  or 
absence  of  invention  in  every  case.  Speaking  of  a  simple 
device  which  the  court  held  not  to  be  an  invention,  he  said 
that  it  "  seems  to  us  not  to  spring  from  that  intuitive  faculty 

'  Thompson  T.  Boisselier,  114 U.S.  Odell,  18  Fed.  Rep.  322,  1883;  Os- 

11,  1884;  Gardner  v.  Here,  118  U.  S.  born  t>.  Judd,  29  Fed.  Rep.  96, 1886; 

191,  1885.  Meers  v.  Kelly,  31  Fed.    Rep.  153, 

*  Pearce  t>.   Mulford,  102  U.   S.  1887;    Untermeyer   «.    Freund,   37 

112,  1880;  Atlantic  Works*?.  Brady,  Fed.  Rep.  343,  1889. 

107  U.S.  199, 1882:  Slawson  v.  Rail-  *  Telephone  Cases,  126  U.  S.  535, 

road  Co.  107  U.  S.  649,  1882;  Mor-  1888. 

ris  «.  McMillin,  112  U.  S.  247, 1884;  *  Heath  t>.  Hildreth,  1  McArthur's 

Hollister  v.  Benedict  Mfg;  Co.  113  Patent  Cases,  19,  1841;  Screw  Co; 

U.  S.  59,  1885;  Stephenson  c.  Rail-  T.  Sloan,  1  McArthur's  Patent  Cases, 

road  Co.  114  U.  S.  149,  1885;  Mun-  210, 1853;  Inre  Seeley,  1  McArthur's 

son  v.  New  York  City,  124  U.  S.  Patent  Cases,  249,  1853;  Chandler 

601, 1888;  Pattee  Plow  Co.  t.  King-  T.  Ladd,  1  McArthur's  PatentCases, 

man  &  Co.  129  U.  S.  294, 1888.  493,  1857. 

1  Western   Electric  Mfg.   Co.  t>. 


22  INVENTION.  [CHAP.  11. 

of  the  mind  put  forth  in  search  for  new  results  or  new 
methods,  creating  what  had  not  before  existed,  or  bringing 
to  light  what  lay  hidden  from  vision;  but,  on  the  other 
hand,  to  be  the  suggestion  of  that  common  experience 
which  arose  spontaneously,  and  by  a  necessity  of  human 
reasoning,  in  the  minds  of  those  who  became  acquainted 
with  the  circumstances  with  which  they  had  to  deal."  ' 
This  language  may  be  thought  to  mean  that  whatever  new 
and  useful  process,  machine,  manufacture,  composition  of 
matter,  or  design  is  produced  by  intuition,  is  an  invention, 
and  that  whatever  such  thing  is  produced  by  reason,  is  not 
an  invention.  But  such  an  interpretation  of  the  language 
would  make  it  a  reductio  ad  absurdum.  Intuition  may  some- 
times reach  to  a  single  brilliant  result;  but  intuition  can 
never  conceive  or  correlate  the  mazes  of  movements  and 
mechanisms  which  constitute  a  modern  automatic  machine. 
To  enforce  such  a  rule  as  that  hypothetically  implied  in  the 
language  of  Justice  MATTHEWS  would  be  to  deny  invention 
to  those  marvellous  combinations  of  numerous  metallic  de- 
vices which  compose  American  automatic  machinery,  and 
which  work  with  such  complexity  and  yet  with  such  preci- 
sion that  they  seem  themselves  to  be  endowed  with  reason. 
But  fortunately  the  supposed  interpretation  of  that  lan- 
guage, is  evidently  not  the  meaning  of  the  court.  The 
court  does  not  deny  invention  to  all  the  products  of  pure 
reason  in  the  useful  arts.  It  merely  finds  want  of  invention 
in  those  things  which  are  conceived  "  spontaneously  and  by 
,a  necessity  of  human  reasoning"  in  the  minds  of  those  who 
have  their  attention  directed  to  the  subject.  Thus  it  is 
seen  to  remain  true  that  the  ideal  line  which  separates 
:things  invented  from  things  otherwise  produced  has  never 
been  completely  defined  nor  described.  There  is  no  affirm- 
ative rule  by  which  to  determine  the  presence  or  absence 
tof  invention  in  every  case."  But  there  are  several  negative 
rules,  each  of  which  applies  to  a  large  class  of  cases,  and 


•  '  Hollister  ®.  Benedict  Mfg.  Co.          *  Dunbar  ».   Albert  Field    Tack 
213  U  S.  72, 1885.  Co.  4  Bann.  &  Ard.  519,  1879. 


CHAP.  II.]  INVENTION.  23 

all  of  which  are  entirely  authoritative  and  sufficiently  clear. 
To  formulate  those  rules,  and  to  state  their  qualifications 
and  exceptions,  and  to  review  and  explain  the  adjudged 
cases  from  which  those  rules,  qualifications,  and  exceptions 
are  deducible,  is  the  scope  of  several  sections  which  im- 
mediately follow. 

§  25.  It  is  not  invention  to  produce  a  device  or  process 
which  any  skilful  mechanic  or  chemist  would  produce 
whenever  required. 

The  Corn  Planter  Patent 1  is  the  accepted  name  of  a  case 
which  was  based  on  ten  reissued  patents  for  as  many  dif- 
ferent features  of  Brown's  corn  planter.  Number  1094  was 
a  patent  for  a  peg  to  prevent  the  rear  part  of  the  machine 
from  tipping  so  much  as  to  dump  the  driver  upon  the 
ground.  The  Supreme  Court  held  that  patent  to  be  void, 
for  the  reason  stated  in  the  rule  which  stands  at  the  head 
of  this  section. 

Vinton  v.  Hamilton a  was  a  case  which  arose  out  of  a 
patent  for  a  hole  in  a  cupola  furnace,  the  function  of  that 
hole  being  to  draw  off  the  molten  cinder  which  floated  on 
the  top  of  the  molten  iron  in  the  furnace.  The  Supreme 
Court  held  that  patent  also  to  be  invalid  for  want  of  in- 
vention ;  held,  in  effect,  that  a  patent  for  a  new  and  useful 
hole  is  as  lacking  in  invention  as  a  patent  for  a  new  and 
useful  peg. 

The  Atlantic  Works  v.  Brady 3  was  based  on  a  patent  for 
a  dredging-boat  with  a  screw  in  its  stem,  boats  with  screws 
in  their  sterns  having  previously  been  used  for  dredging  by 
running  them  stern  foremost.  In  holding  that  patent  to  be 
void,  the  Supreme  Court,  speaking  by  Justice  BRADLEY,  de- 
livered a  paragraph  of  very  instructive  argument  in  support 
of  the  rule  of  this  section :  a  paragraph  so  valuable  as  to 
call  for  its  verbatim  quotation  in  this  text. 

"  The  process  of  development  in  manufactures  creates  a 


1  The    Corn-Planter    Patent,    23      491,  1881. 

Wallace,  232,  1874.  8  Atlantic  Works  t>.  Brady,   107 

8  Vinton  «.  Hamilton,  104  U.  S.      U.  S.  199,  1882. 


24  INVENTION.  [CHAP.  n. 

constant  demand  for  new  appliances,  which  the  skill  of  or- 
dinary head  workmen  and  engineers  is  generally  adequate 
to  devise,  and  which,  indeed,  are  the  natural  and  proper 
outgrowth  of  such  development.  Each  step  forward  pre- 
pares the  way  for  the  next,  and  each  is  usually  taken  by 
spontaneous  trials  and  attempts  in  a  hundred  different 
places.  To  grant  to  a  single  party  a  monopoly  of  every 
slight  advance  made,  except  where  the  exercise  of  invention 
somewhat  above  ordinary  mechanical  or  engineering  skill 
is  distinctly  shown,  is  unjust  in  principle,  and  injurious  in 
its  consequences.  The  design  of  the  patent  laws  is  to 
reward  those  who  make  some  substantial  discovery  or 
invention  which  adds  to  our  knowledge  and  makes  a  step 
in  advance  in  the  useful  arts.  Such  inventors  are  worthy 
of  all  favor.  It  is  never  the  object  of  those  laws  to  grant  a 
monopoly  for  every  trifling  device,  every  shadow  of  a  shade 
of  an  idea,  which  would  naturally  and  spontaneously  occur 
to  any  skilled  mechanic  or  operator  in  the  ordinary  prog- 
ress of  manufactures.  Such  an  indiscriminate  creation  of 
exclusive  privileges  tends  rather  to  obstruct  than  to  stim- 
ulate invention.  It  creates  a  class  of  speculative  schemers 
who  make  it  their  business  to  wratch  the  advancing  wave  of 
improvement,  and  gather  its  foam  in  the  form  of  patented 
monopolies,  which  enable  them  to  lay  a  heavy  tax  upon 
the  industry  of  the  country  without  contributing  anything 
to  the  real  advancement  of  the  arts.  It  embarrasses  the 
honest  pursuit  of  business  with  fears  and  apprehensions  of 
concealed  liens  and  unknown  liabilities  to  lawsuits  and 
vexatious  accountings  for  profits  made  in  good  faith." 

Many  other  cases  '  may  also  be  consulted  for  illustrations 
of  the  rule  of  this  section. 

1  Tack  Co.  v.  Mfg.  Co.  109  U.  S.  Brown  t>.  District  of  Columbia,  130 

119,  1883;  Morris  v.  McMillin,  112  U.   8.  1888;  Snow  v.  Taylor,  4 

U.  S.  244, 1884;  Hollister  «.  Bene-  Bann.   &  Ard.  5,  1878;  Walker  v. 

diet  Mfg.   Co.  113  U.  S.  72,  1885;  Rawsori,   4.    Barm.    &    Ard.     130, 

Yale  Lock  Co.   v.   Greenleaf,   117  1879;    King  v.    Frostel,  4  Bann.  & 

U.  S.  554,1886;  Pomace  Holder  Co.  Ard.   238,  1879;  Lorillard  «.  Ridg- 

D.   Ferguson,  119  U.   S.  335,  1886;  way.  4  Bann.  &  Ard.  565,  1879;  Na- 

Weir  v.  Morden,  125  U.  S.  98, 1888;  tional  Mfg  Co.  -o.  Meyers,  15  Fed. 


CHAP.  II.]  INVENTION.  25 

§  26.  But  if  a  particular  result  was  long  desired  and  some- 
times sought,  but  never  attained,  want  of  invention  cannot 
be  predicated  of  a  device  or  process  which  first  reached  that 
result,  on  the  ground  that  the  simplicity  of  the  means  is  so 
marked  that  many  believe  they  could  readily  have  produced 
it  if  required.1  That  is  the  opinion  of  many  relevant  to 
some  real  inventions,  because  solved  problems  often  seem 
easy  to  persons  who  could  never  have  solved  them,  and  true 
inventions  sometimes  seem  obvious  to  persons  who  could 
never  have  produced  them.  This  doctrine  does  not  contra- 
dict that  of  the  last  section.  It  only  teaches  us  that  the 
fact  upon  which  the  doctrine  of  the  last  section  is  found- 
ed cannot  be  proved  by  a  posteriori  opinion,  when  that 
opinion  is  inconsistent  with  a  priori  attempts  and  failures. 

In  The  Loom  Co.  v.  Biggins,"  Justice  BRADLEY  remarked 
that :  "  It  may  be  laid  down  as  a  general  rule,  though  per- 
haps not  an  invariable  one,  that  if  a  new  combination  and 
arrangement  of  known  elements  produce  a  new  and  bene- 
ficial result,  never  attained  before,  it  is  evidence  of  inven- 
tion." The  exception  to  his  rule,  which  Justice  BRADLEY 
contemplated,  doubtless  refers  to  cases  the  result  wherein 

Rep.  241.  1883;  McMurray  v.   Mil-  Rep.  590,   1887;  Kidd  «.  Horry,  38 

ler,  16  Fed.  Rep.  473,  1883;  Day  v.  Fed.  Rep.  712,  1888. 

Railroad  Co.  23  Fed  Rep.  189, 1885;  '  Celluloid  Mfg.  Co.  v.  Chrolithion 

French  v.  Carter,  25  Fed  .Rep.  41,  Collar  &  Cuff  Co.  23  Fed.  Rep.  397, 

1885;  Calkins  v.  Oshkosh  Carriage  1885;  Celluloid  Mfg.  Co.  v.  Ameri- 

Co.  27  Fed.  Rep.  296,  1886;  Muller  can  Zylonite  Co.  28  Fed.  Rep.  195, 

v.  Ellison,  27  Fed.  Rep.  456,  1886;  1886;  Dudgeon  v.  Watson,  29  Fed. 

Consolidated  Fruit  Jar  Co.  ».  Bel-  Rep  248, 1886;  International  Crown 

laire  Stamping  Co.  28  Fed.  Rep.  91,  Co.  v.  Richmond,  30  Fed.  Rep.  778. 

1886;  Adams  v.  Bellaire  Stamping  1887;  Wilcox  v.  Bookwalter,  31  Fed. 

Co.  28  Fed.  Rep.  362. 1886;  Willard  Rep.  229,  1887;  Osborne  v.  Glazier, 

«.  Cooper,  28  Fed.  Rep.  750,  1886;  31  Fed.  Rep.  402.  1887;  Palmer*. 

Hasselman  «.   Gaar,  29  Fed.   Rep.  Johnston,  34  Fed.   Rep.  336.  1888; 

318,  1886;    Celluloid  Mfg.   Co.   ».  Stegner  v.  Blake,  36  Fed.  Rep.  185, 

Zylonite  Novelty  Co.  30  Fed.  Rep.  1888;  Marvin  v.  Gotshall,   86  Fed. 

617.  1887;  Roth  v.  Keebler,  30  Fed.  Rep.  908,  1888;  Timken  v.  Olin,  37 

Rep.   618,  1887;  Cluett    v.    Claflin,  Fed.  Rep.   205,   1888;    Tondeur  v. 

30  Fed.  Rep.  922,  1887;  McNab  «.  Chambers.  37  Fed.  Rep.  838,  1889. 

Mfg.   Co.   32  Fed.  Rep.  155,  1887;  8  Loom  Co. «.  Higgins,  105  U.  S. 

Landesmann  v.  Jonasson,  82  Fed.  591,  1881. 


26  INVENTION.  [CHAP.  n. 

was  never  before  attained  only  because  it  was  never  before 
desired.  In  the  Circuit  Court  cases  which  support  the  doc- 
trine of  this  section,  the  proviso  that  the  thing  or  process 
which  the  patentee  was  the  first  to  produce  had  been  pre- 
viously sought  for  by  others  in  vain,  is  never  overlooked, 
but,  on  the  contrary,  is  always  treated  as  a  material  element 
in  the  proposition.1 

A  qualification  of  the  rule  of  this  section  consists  in  the 
subordinate  point,  that  where  several  improvements  have 
mutually  contributed  to  introduce  an  unused  invention  into 
public  favor,  and  where  it  does  not  appear  that  either  of 
those  improvements  alone  would  have  produced  that  result ; 
no  presumption  in  favor  of  either  of  those  improvements 
being  an  invention,  arises  out  of  the  commercial  success  of 
the  invention  thus  improved.2  And  another  qualification 
should  be  made,  by  holding  that  the  rule  of  the  section 
does  not  apply  where  the  prior  attempts  were  unsuccessful 
because  they  were  stupid.3 

§  27.  It  is  not  invention  to  produce  an  article  which  differs 
from  some  older  thing  only  in  excellence  of  workmanship. 

In  Pickering  v.  McCullough 4  it  appeared  that  certain 
prior  combinations  were  not  capable  of  successful  working 
because  their  mechanical  construction  was  faulty.  The 
Supreme  Court  held  that  those  faults  could  have  been 
removed  by  mere  mechanical  skill,  without  the  exercise  of 
tne  faculty  of  invention,  and  that  therefore  those  combina- 
tions constituted  good  defences  to  the  patent  in  suit. 

In  Buzzell  v.  Fifield  B  Judge  LOWELL  held  a  patent  for  a 

1  Terry  Clock  Co.  v.  New  Haven  chine  Co.  v.  Frame,  24  Fed.  Rep. 

Clock  Co.  4  Bann.  &  Ard.  121, 1879;  596, 1884;  Asmus  v.  Alden,  27  Fed. 

Wallace  v.  Noyes,  13  Fed.  Rep.  180,  Rep.  687,  1886. 

1882;   Ward  v.   Plow  Co.   14  Fed.  *  Corbin    Cabinet    Lock    Co.    v. 

Rep  696, 1883;  Davis  v.  Fredericks,  Eagle  Lock  Co.  37  Fed.  .Rep.  338, 

19  Fed.  Rep.  99,  1884;  Patterson  v.  1889. 

Duff,  20  Fed.  Rep.  641,  1884;  Brown  3  Butler  t>.  Steckel,  27  Fed.  Rep. 

Mfg.  Co.  «.  Deere,  21  Fed.  Rep.  713,  219,  1886. 

1884;  McFarland  v.  Spencer,  23  Fed.  4  Pickering  v.   McCullough,    104 

Rep.  151,  1885;  Celluloid  Mfg.  Co.  U.  S.  810, 1881. 

0.  Chrolithion  Collar  &  Cuff  Co.  23  s  Buzzell  v.  Fifield,  7  Fed.  Rep. 

Fed.   Rep.  397,  1885;  Sewing  Ma-  467,  1881. 


CHAP.  II.]  INVENTION.  27 

certain  manufacture  which  was  salable  as  an  article  of  com- 
merce, to  be  void,  because  of  a  prior  article  similar  to  it, 
but  so  rough  and  unfinished  that  it  never  could  have  found 
a  sale  in  the  market.  Similar  circumstances  and  opinions 
also  controlled  the  decision  by  the  same  Judge  in  the  case 
of  Hatch  v.  Moffitt.1 

§  28.  It  is  not  invention  to  substitute  superior  for  infe- 
rior materials,  in  making  one  or  more  or  all  of  the  parts  of 
a  thing.* 

In  each  of  the  leading  cases  which  established  this  rule, 
the  decision  was  made  in  spite  of  the  undeniable  superi- 
ority of  the  new  manufacture  over  those  which  preceded  it. 
The  clay  door-knobs  covered  by  the  first  patent  have  every- 
where driven  from  use  those  wooden  and  metallic  ones 
which  were  previously  known.  The  improvement  in  the 
second  of  the  cited  cases  had  much  merit ;  and  that  in- 
volved in  the  third  case  was  widely  adopted.  The  three 
patents  were,  however,  all  held  to  be  void  by  the  Supreme 
Court,  because,  though  specifically  new  and  highly  useful, 
the  things  covered  by  them  were  found  not  to  be  invented 
things :  were  held  to  be  only  the  result  of  judgment  and 
skill  in  the  selection  and  adaptation  of  materials,  and  not 
the  product  of  the  inventive  faculties  of  those  who  produced 
them. 

There  being  no  invention  in  substituting  superior  for  in- 
ferior materials,  there  is  certainly  none  in  selecting  from  a 
number  of  materials  recommended  by  a  prior  patentee,  that 
one  which  is  best  adapted  to  the  purpose  in  view.* 

§  29.  Important  exceptions  have,  however,  been  estab- 


1  Hatch  «.   Moffitt,  15  Fed.  Rep.  McArthur's  Patent  Cases.  536, 1857; 

252,  18*3.  Post  t>.  Hardware  Co.  26  Fed.  Rep. 

*  Hotchktss    «.    Greenwood.     11  618, 1886;  Forschnerr.  Baumgarten, 

Howard,  248.  1850;  Hicks  c.  Kelsey,  26  Fed.  Rep.  858,  1886;  J.  L.  Mott 

18  Wallace.   670.  1873;    Terhune  «.  Iron  Works  t.  Cassidy,  31  Fed.  Rep. 

Phillips,  99  U.  S.  593,  1878;  Gard-  47,   1887;  National  Roofing  Co.  «. 

ner  «.  Herz,  118  U.  S.  192,   1885;  Garwood,  35  Fed.  Rep.  658,  1888. 

Brown  t>.  District  of  Columbia,  130  •  Welling  «.  Crane,  14  Fed  Rep. 

U.  S.        ,  1888;  In  re  Maynard,  !  571,1882. 


28  INVENTION.  [CHAP.  n. 

lished  to  the  general  rule  of  the  last  section.  If  the  sub- 
stitution involved  a  new  mode  of  construction,  or  if  it 
developed  new  uses  and  properties  of  the  article  made, 
it  may  amount  to  invention.1  So  also,  where  the  excel- 
lence of  the  material  substituted  could  not  be  known  be- 
forehand, and  where  practice  showed  its  superiority  to 
consist  not  only  in  greater  cheapness  and  greater  durability, 
but  also  in  more  efficient  action,  the  substitution  of  a  supe- 
rior for  an  inferior  material  was-  held  by  Judge  NATHANIEL 
SHIPMAN  to  amount  to  invention.2  And  substantially  the 
same  doctrine  has  been  held  by  Justice  BRADLEY/  and  by 
Judge  WALLACE.* 

§  30.  It  is  not  invention  to  so  enlarge  and  strengthen  a 
machine  that  it  will  operate  on  larger  materials  than  before. 

In  Phillips  v.  Page  5  the  patent  covered  the  first  circular 
saw-mill  which  was  adapted  to  sawing  logs.  Its  utility  was 
great,  and  was  unquestioned.  Machines  like  it,  except  that 
they  were  much  smaller  in  every  part,  had  been  used  before 
to  saw  lath  and  other  slender  articles  out  of  small  blocks 
of  wood.  The  Supreme  Court  therefore  held  that  Mr.  Page 
did  not  invent  a  circular  saw-mill,  but  merely  constructed 
one,  by  copying  on  a  larger  scale  the  prior  machine  for 
sawing  lath. 

In  the  case  of  the  Planing  Machine  Co.  v.  Keith 6  the  pat- 
ent covered  the  Woodbury  Planing  Machine,  a  machine 
which  differed  from  the  older  Woodworth  Planing  Machine 
in  one  respect  only.  Woodworth  used  rollers  to  press  the 
boards  against  the  bed  of  the  machine,  whereas  Woodbury 
used  pressure  bars  for  that  purpose.  The  Supreme  Court 
held  the  Woodbury  patent  to  be  void  because  Alfred  Anson, 
of  Norwich,  Connecticut,  had  previously  invented  and  con- 


1  Smith  «.  Dental  Vulcanite  Co.  4  Celluloid  Mfg.  Co.  v.  American 

93  U.  S.  496,  1876.  Zylonite    Co.    35    Fed.    Rep.    301, 

5  Dalton  v.  Nelson,  13  Blatch.  357,  1888. 

1876.  5  Phillips  v.  Page,  24  Howard,  164, 

3  Celluloid    Mfg.    Co.    «.    Crane  1860. 

Chemical    Co.    36  Fed.    Rep.   110  •  Planing  Machine  Co.  v.  Keith, 

1888.  101  U.  S.  490,  1879. 


CHAP.  II.]  INVENTION.  29 

structed  a  machine  for  dressing  window-sash,  which  had 
pressure  bars  like  Woodbury,  instead  of  pressure  rollers 
like  Woodworth.  This  decision  was  made  notwithstanding 
the  fact  that  the  Anson  machine  was  too  small  and  too  weak 
for  general  planing  work  upon  boards  and  planks.  In  Peters 
v.  Active  Mfg.  Co.  this  rule  was  again  applied  and  illus- 
trated by  the  Supreme  Court.1 

§  31.  It  is  not  invention  to  change  the  degree  of  a  thing, 
or  of  one  feature  of  a  thing. 

In  Glue  Co.  v.  Upton  *  the  patent  covered  pulverized  glue 
made  from  flake  glue  by  grinding  it  in  any  suitable  manner. 
It  had  several  points  of  superiority  over  all  former  kinds  of 
glue,  but  the  Supreme  Court  held  that,  not  being  a  product 
of  invention,  the  patent  covering  it  was  void. 

In  Guidet  v.  Brooklyn  3  the  patent  covered  paving-stones 
of  a  certain  shape  and  with  rough  sides.  Paving-stones  of 
the  same  shape,  but  with  sides  less  rough,  had  been  known 
before.  To  make  the  sides  of  the  prior  stones  rougher  was 
held  by  the  Supreme  Court  to  be  a  change  in  degree  only, 
and  therefore  not  patentable. 

In  Estey  v.  Burdett 4  one  of  the  claims  of  the  patent  in- 
volved depended  upon  concentrating  certain  valve  openings 
into  a  smaller  space  than  had  theretofore  been  occupied  by 
them.  The  Supreme  Court  held  that  there  was  no  inven- 
tion in  that  change. 

In  Preston  v.  Manard &  the  alleged  invention  consisted  in 
making  the  reel  of  a  fountain  hose-carriage  of  larger  diam- 
eter than  were  the  reels  of  former  hose-carriages,  in  order  to 
allow  the  water  to  pass  through  the  hqse  when  partly 
wound  upon  the  reel.  The  Supreme  Court  held  that  there 
resided  no  invention  in  that  improvement. 

Circuit  Court  cases  *  which  have  been  decided  by  skilful 

1  Peters  v.  Mfg.  Co.  129  U.  S.  530,  4  Estey  v.  Burdett,  109  U.  S.  640, 

1888.  1883. 

*  Glue  Co.  v.  Upton,  97  U.S.  6,  *  Preston  v .  Manard,  116  U.  S. 

1877.  663,  1885. 

8  Guidet  v.  Brooklyn,  105  U.  S.  •  Stow  v.  City  of  Chicago,  3 

552,  1881.  Bann.  &  Ard.  91,  1877;  White  v. 


30  INVENTION.  [CHAP.  n. 

judges  furnish  still  other  illustrations  of  the  rule  of  this 
section. 

§  32.  Aggregation  is  not  invention. 

In  Hailes  v.  Van  Wormer '  the  patents  passed  upon  cov- 
ered certain  self-feeding  coal  stoves.  These  stoves  were  bet- 
ter than  any  which  preceded  them,  because  they  contained 
more  good  things  than  were  ever  before  assembled  in  that 
kind  of  heater.  All  of  the  things  so  assembled  were  old. 
The  superiority  of  the  patented  stoves  arose  from  the  fact 
that  sundry  good  features,  theretofore  scattered  through 
several,  were  in  them  gathered  into  one  such  article  of 
manufacture.  The  things  so  united  did  not,  however,  per- 
form any  joint  function,  but  each  did  only  what  it  had 
formerly  done  in  former  stoves.  The  Supreme  Court  held 
the  whole  to  be  a  mere  aggregation  of  devices,  and  not  to 
be  invention. 

The  case  of  Reckendorfer  v.  Faber"  was  based  upon  pat- 
ents for  a  new  and  useful  article,  of  which  many  millions  of 
specimens  had  been  made  and  sold  since  those  patents  were 
granted.  That  article  was  a  piece  of  soft  rubber  united  to 
one  end  of  a  lead  pencil.  The  Supreme  Court  called  atten- 
tion to  the  fact  that  there  was  no  joint  operation  performed 
by  the  pencil  and  the  rubber,  and  therefore  held  the  patents 
to  be  void  for  want  of  invention. 

In  Pickering  v.  McCullough 3  the  doctrine  of  this  section 
was  explained  by  Justice  MATTHEWS  with  uncommon  clear- 
ness. Speaking  through  him,  the  Supreme  Court  said : 
"  In  a  patentable  combination  of  old  elements,  all  the  con- 
stituents must  so  enter  into  it  as  that  each  qualifies  every 
other  ;  to  draw  an  illustration  from  another  branch  of  the 
law,  they  must  be  joint  tenants  of  the  domain  of  invention, 
seized  each  of  every  part,  per  my  et  per  tout,  and  not  mere 

Lee,  14  Fed.  Rep.  790, 1882;  Woon-          »  Hailes  v.  Van  Wormer,  20  Wai- 
socket  Rubber    Co.  v.   Candee,  23      lace,  353,  1873. 
Fed.  Rep.  797,  1885;  Smith  v.  Mur-          2  Reckendorfer  v.  Faber,  92  U.  S. 
ray,  27  Fed.  Rep.  69,  1886;  Kurd  «.       357,  1875. 

Snow,  35  Fed.  Rep.  423, 1888.  z  Pickering   v.  McCullough,   104 

U.  S.  318,  1881. 


CHAP.  II.]  INVENTION.  31 

tenants  in  common,  with  separate  interests  and  estates.  It 
must  form  either  a  new  machine  of  a  distinct  character  and 
function,  or  produce  a  result  due  to  the  joiut  and  co-operat- 
ing action  of  all  the  elements,  and  which  is  not  the  mere 
adding  together  of  separate  contributions." 

In  addition  to  these  three  leading  Supreme  Court  cases, 
several  other  precedents  in  the  same  tribunal,  and  many 
Circuit  Court  decisions  illustrate  the  application  of  the 
rule  of  this  section  to  a  variety  of  contrivances  and  aggre- 
gations.1 

§  33.  The  rule  of  the  last  section  does  not  state  nor  imply 
that  all  the  parts  of  a  patentable  combination  must  act  at 
the  same  time.  The  fact  on  that  point  is  no  criterion  by 
means  of  which  to  distinguish  invention  from  aggregation. 
Justice  CURTIS,  in  a  Circuit  Court  case,1  stated  the  true 
doctrine  on  this  subject,  and  stated  it  with  marked  lucidity, 
saying  :  "  To  make  a  valid  claim  for  a  combination,  it  is  not 
necessary  that  the  several  elementary  parts  of  the  combi- 
nation should  act  simultaneously.  If  those  elementary 
parts  are  so  arranged  that  the  successive  action  of  each 
contributes  to  produce  some  one  practical  result,  which 
result,  when  attained,  is  the  product  of  the  simultaneous 
or  successive  action  of  all  the  elementary  parts,  viewed  as 


1  Tack  Co.  v.  Mfg.  Co.  109  U.  S.  21  Fed.  Rep.  566,  1884;  Mosler  Safe 

120,  1883;  Bussey  v.  Mfg.  Co.  110  &  Lock  Co.  «.  Mosler,  22  Fed.  Rep. 

U.  8.  145,  1883;  Phillips  v.  Detroit,  901,  1885;  Watson  v.  Railway  Co. 

Ill  U.  S.  607,  1883;  Stephenson  v.  23    Fed.    Rep.    445,    1885;     Peard 

Railroad  Co.  114  U.  S.  158,  1884;  t>.    Johnson,    23    Fed.     Rep.    509, 

Beecher  Mfg.  Co.  v.  Atwater  Mfg.  1885;  Ames  v.  Spring  Bed   Co.   24 

Co.  114  U.  S.  523,  1884;  Thatcher  Fed.  Rep.  785, 1885;  Phipps  v.  Yost, 

Heating  Co.  *.  Burtis,  121  U.  S.  293,  26-Fed.  Rep.  448,  1886;  Troy  Ma- 

1886;  Hendy  v.  Iron  Works,  127  U.  chinery  Co.  v.  Bunnell.  27  Fed.  Rep. 

S.  375,  1887;  Combined  Can  Co.  v.  810,  1886;  Duesh  v.  Medlar  Co.  30 

Lloyd,    11    Fed.    Rep.    154,    1882;  Fed.  Rep  619, 1887;  J.  L.  Mott  Iron 

Perry  t>.  Foundry  Co.  12  Fed.  Rep.  Works  v.  Skirm,  30  Fed.  R<?p.  621, 

149,  436,  1882;  Doubleday  9.  Roess,  1887;   Schmid  v.  Mfg.  Co.  37  Fed. 

11  Fed.  Rep.  737,  1880;  Nicodemus  Rep.  347, 1889. 

v.  Frazier,  19  Fed.  Rep.  260,  1884;  *  Forbush  9.  Cook,  2  Fisher,  669, 

Stutz  v.  Armstrong,  20  Fed.   Rep.  1857. 
843,  1884;    Hayes  v.    Bickelhoupt, 


32  INVENTION.  [CHAP.  n. 

one  entire  whole,  a  valid  claim  for  thus  combining  those 
elementary  parts  may  be  made." 

§  34.  It  is  not  invention  to  duplicate  one  or  more  of  the 
parts  of  a  machine. 

In  Dunbar  v.  Myers '  the  patent  was  based  on  a  circu- 
lar-saw mill  adapted  to  sawing  lumber  into  thin  sheets  to 
be  used  for  the  backs  of  picture-frames  and  mirrors.  It 
differed  from  former  machines  used  for  the  same  purpose, 
mainly  in  the  fact  that  it  had  a  plate  on  each  side  of  the 
saw  for  the  purpose  of  expanding  the  saw  kerf  and  thus 
keeping  the  sawed  parts  away  from  the  sides  of  the  saw, 
whereas  earlier  machines  had  such  a  plate  on  only  one  side 
of  the  saw.  The  two  plates  of  the  patented  machine  dif- 
fered from  each  other  in  diameter  and  in  one  or  two  other 
respects,  but  the  function  performed  by  each  of  them  was 
substantially  identical  with  that  performed  by  the  other. 
The  Supreme  Court  therefore  held  the  claim  which  cov- 
ered the  additional  plate  to  be  void  for  want  of  invention. 

Millner  v.  Yoss 2  was  decided  by  Judge  BOND  in  Virginia. 
The  patent  involved  purported  to  cover  an  arrangement  of 
furnaces  and  flues  in  a  tobacco-curing  house.  It  appeared 
to  differ  from  prior  arrangements  only  in  the  fact  that  each 
of  the  furnaces  had  two  or  more  fire-places  of  different 
sizes  on  each  side  of  a  chimney,  whereas  former  arrange- 
ments had  but  one.  Judge  BOND  wittily  said  that,  "  Where 
one  stove  is  found  to  be  unequal  to  the  heating  of  a  room, 
to  put  another  beside  i't,  even  though  smaller,  requires  no 
invention."  Mr.  Millner's  patent  was  therefore  held  to  be 
void. 

§  35.  It  is  not  invention  to  omit  one  or  more  of  the  parts 
of  an  existing  thing,  unless  that  omission  causes  a  new 
mode  of  operation  of  the  parts  retained. 

Stow  v.  Chicago,3  decided  by  Judge  BLODGETT,  is  the  case 
which  perhaps  most  exactly  corresponds  with  this  rule. 


1  Dunbar  v.  Myers,  94  U.  S.  197,      1882. 

1876.  3  Stow  v.  City  of  Chicago,  3  Bann. 

2  Millner  v.  Voss,  4  Hughes,  262,      &  Ard.  92,  1877. 


CHAP.  II.]  INVENTION.  33 

The  patent  in  that  case  covered  a  wood  pavement  like  that 
of  Nicholson,  except  that  it  omitted  the  board  foundation 
and  also  the  board  strips  of  that  earlier  pavement.  Judge 
BLODGETT  held  that  those  omissions  constituted  no  inven- 
tion, saying :  "  A  reconstruction  of  a  machine,  so  that  a  less 
number  of  parts  will  perform  all  the  functions  of  the 
greater,  may  be  invention  of  a  high  order,  but  the  omission 
of  a  part,  with  a  corresponding  omission  of  function,  so 
that  the  retained  parts  do  just  what  they  did  before  in  the 
combination,  cannot  be  other  than  a  mere  matter  of  judg- 
ment, depending  upon  whether  it  is  desirable  to  have  the 
machine  do  all,  or  less,  than  it  did  before."  These  views 
were  also  reiterated  and  reinforced  by  the  same  judge 
many  years  after  they  were  stated  and  applied  by  him  in 
the  leading  case.1 

The  exception  which  is  stated  in  the  general  rule  of  this 
section  was  judicially  applied,  and  is  well  illustrated,  in  a 
case  decided  by  Judge  NATHANIEL  SHIPMAN,  where  invention 
was  found  to  reside  in  so  reorganizing  a  meat-mincing  ma- 
chine as  to  dispense  with  many  of  its  parts,  and  as  to  cause 
the  parts  retained  to  do  the  work  of  the  original  machine.* 
And  in  a  case  which  involved  a  process  patent,  the  Supreme 
Court  has  decided  that  invention  resided  in  omitting  one 
of  the  steps  in  an  old  process,  where  the  resulting  new  pro- 
cess was  the  result  of  careful  and  long-continued  experi- 
ment, and  where  its  utility  was  decidedly  greater  than  that 
of  the  old  process.8 

§  36.  It  is  not  invention  to  improve  a  known  structure 
by  substituting  an  equivalent  for  either  of  its  parts.4 

What  is  signified  in  the  patent  law  by  the  word  "  equiva- 
lent" is  explained  in  detail  in  the  chapter  on  infringement. 


1  McClain  t>.  Ortmayer,  33  Fed.  119.  1874;  Crouch  v.  Roeraer,  103  U. 

Rep.  287,  1888.  8.  797, 1880;  Cochranet).  Waterman. 

4  Enterprise  Mfg.  Co.  t>.  Sargent,  1  McArthur's  Patent  Cases,  54, 1844; 

28  Fed.  Rep.  187,  1886.  Perry  v.  Foundry  Co.  12  Fed  Rep. 

8  Lawther  v.  Hamilton,  124  U.  S.  436,  1882;  Celluloid  Mfg.  Co.  e. 

1,1887.  Tower,  26  Fed,  Rep..  451,.  1885. 

4  Smith  v.   Nichols,  21  Wallace, 


o4  INVENTION.  [CHAP.  II. 

The  subject  is  of  double  importance,  because  it  relates 
sometimes  to  the  validity  and  sometimes  to  the  infringe- 
ment of  patents.  A.  B.  may  construct  and  may  patent  a 
machine  which  differs  from  the  prior  patented  machine  of 
C.  D.  in  one  part  only.  If  the  courts  decide  that  the  new 
part  inserted,  is  an  equivalent  of  the  old  part  omitted,  then 
the  machine  of  A.  B.  will  be  an  infringement ;  and  it  will 
not  be  an  invention,  unless  the  new  part,  not  only  performs 
the  function  of  the  part  for  which  it  was  substituted,  but 
also  performs  another  function  by  another  mode  of  opera- 
tion.1 If,  on  the  other  hand,  the  courts  hold  that  the  part 
inserted  is  not  an  equivalent  of  the  old  part  omitted,  then 
the  machine  of  A.  B.  may  be  an  invention,  and  it  will  not 
be  an  infringement  of  any  claim  covering  the  entire  machine 
of  C.  D. 

§  37.  It  is  not  invention  to  combine  old  devices  into  a 
new  article  without  producing  any  new  mode  of  operation. 

Stimpson  v.  Woodman 2  involved  a  patent  for  a  machine 
for  pebbling  leather.  It  gave  the  leather  the  pebbled  sur- 
face by  means  of  a  roller,  which  had  the  counterpart  of 
that  surface  engraved  or  sunk  on  its  periphery.  The  same 
kind  of  roller  had  previously  been  used  for  the  same  pur- 
pose by  hand,  and  the  same  kind  of  machine  had  been  used 
for  compressing  leather,  except  that  the  roller  in  it  was 
smooth.  The  Supreme  Court  held  that  the  change  in- 
volved in  putting  the  old  figured  hand  roller  in  the  place  of 
the  plain  roller  of  the  machine,  involved  no  invention,  and 
that  the  patent  was  void,  if  the  facts  were  as  stated. 

Heald  v.  Rice 3  was  based  on  a  patent  which  covered  a 
certain  previously  known  straw-feeding  attachment  in  com- 
bination with  a  certain  previously  known  return-flue  boiler, 
that  straw-feeding  attachment  having  been  previously  com- 
bined with  a  fire-box  boiler.  The  utility  of  the  return-flue 
boiler  in  that  combination  was  much  greater  than  that  of 


1  In  re  Hebbard,   1  McArthur's      lace,  117,  1869. 

Patent  Gases,  550,  1857.  *  Heald  «.   Rice,   104  U.S.  754, 

8  Stirapson  «.  Woodman,  10  Wai-      1881. 


CHAP.  II.]  INVEKTION.  35 

the  fire-box  boiler,  but  the  Supreme  Court  nevertheless 
held  that  there  was  no  invention  in  the  union  of  the  former 
with  the  straw-feeding  attachment. 

Hall  v.  Macneale1  shows  the  following  state  of  facts. 
The  patentee  first  made  safe  doors  the  plates  of  which  were 
held  together  by  cored  conical  arbors,  having  screw  threads 
cut  on  their  exterior  surfaces,  and  later  he  made  other  safe 
doors  the  plates  of  which  were  held  together  by  solid  con- 
ical arbors  which  had  no  such  screw  threads  as  the  cored 
conical  arbors  had,  and  he  afterward  obtained  a  patent  for 
the  combination  of  the  plates  of  safe  doors  with  solid  con- 
ical arbors  having  such  screw  threads.  The  Supreme 
Court,  speaking  by  Justice  BLATCHFORD,  said  that  "  There 
was  no  invention  in  adding  to  the  solid  conical  bolt  the 
screw  thread  of  the  cored  conical  bolt." 

Many  Circuit  Court  cases  also  involve  the  doctrine  of 
this  section.  In  one  such  case "  Justice  BLATCHFORD  held  a 
patent  to  be  void  for  want  of  invention  which  covered  a 
combination  of  a  whip  socket  having  an  annular  recess  in 
it,  with  a  flexible  elastic  ring  held  in  that  recess  by  its  own 
elasticity,  and  provided  on  its  inner  edge  with  non-contig- 
uous projections,  separated  so  that  they  could  not  be 
pressed  into  contact  with  each  other  by  the  insertion  of 
the  whip  handle  into  the  ring.  That  decision  was  based  on 
the  fact  that  a  prior  whip  socket  having  an  annular  recess 
had  been  combined  with  a  plain  rubber  ring  in  that  recess, 
and  on  the  further  fact  that  flexible  elastic  rings  constructed 
like  those  of  the  patent  had  been  combined  with  a  whip 
socket  which  had  no  annular  recess,  but  which  clamped 
that  ring  between  the  upper  end  of  that  socket  and  a  cap 
above  it.  Judge  LOWELL  has  also  decided  three  similar 
cases.  In  one  of  them  *  he  held  it  to  be  no  invention  to 
give  paper  collars  the  same  kind  of  surface  that  had  there- 
tofore been  impressed  upon  other  articles  of  paper.'  In 


1  Hall  v.  Macneale,  107  U.  S.  90,      1040,  1882. 

1882.  *  Union  Paper  Collar  Co.  D.  Le- 

1  Searls  «.  Merriam,  22  Off.  Gaz.      land,  1  Bann.  &  Ard.  491,  1874. 


36  INVENTION.  [CHAP.  n. 

another '  he  decided  that,  embossed  lines  on  writing-paper 
being  old,  and  ogee  lines  embossed  on  other  paper  being 
old,  there  was  no  invention  in  embossing  ogee  lines  on  writ- 
ing-paper, to  serve  as  guides  to  the  eye  of  the  writer.  In  a 
third  case, a  he  held  that,  soft  base-balls  having  been  covered 
with  a  double  cover,  and  hard  base-balls  having  been 
covered  with  a  single  cover,  there  was  no  invention  in 
covering  a  hard  base-ball  with  a  double  cover.  And  other 
still  later  cases  illustrate  the  same  doctrine. s 

§  38.  It  is  not  invention  to  use  an  old  thing  or  process 
for  a  new  purpose. 

In  Tucker  v.  Spalding 4  the  patent  covered  a  combination 
of  a  circular  disk  with  removable  saw  teeth.  There  was 
a  prior  combination  of  a  circular  disk  with  removable 
cutters  for  the  purpose  of  cutting  tongues  and  grooves. 
The  Supreme  Court  held  that  if  what  the  latter  combination 
did  was  in  its  nature  the  same  as  sawing,  and  if  its  struc- 
ture and  its  action  suggested  to  the  mind  of  the  ordinarily 
skilful  mechanic  this  double  use  to  which  it  could  be 
adapted  without  material  change,  then  the  combination  of 
the  patent  was  but  a  double  use  of  the  older  combination, 
and  was  therefore  not  an  invention,  and  not  patentable. 

Brown  v.  Piper B  is  a  case  in  which  the  Supreme  Court 
held,  that  a  patent  for  an  apparatus  for  preserving  fish  and 
other  articles  in  a  close  chamber  by  means  of  a  freezing- 
mixture  having  no  contact  with  the  atmosphere  of  the  pre- 
serving chamber,  covered  nothing  but  a  double  use  of  the 
well-known  ice-cream  freezer. 

In  Roberts  v.  Kyer 8  the  same  tribunal  decided  that  to 

1  Cone  v.  Morgan  Envelope  Co.  4  1887;  Washburn  &  Moen  Mfg.  Co. 

Bann.  &  Ard.  109,  1879.  v.  Barbed  Wire  Co.   33  Fed.  Rep. 

*  Malm  v.  Harwood,  3  Bann.  &  273,  1888;  Low  «.  Stove  Co.  36  Fed. 

Ard.  517,  1878.  Rep.  903,  1888. 

8  Yale  Lock  Mfg.  Co.  v.  National  4  Tucker  v.  Spalding,  13  Wallace, 

Bank,  17  Fed.  Rep.  533, 1883;  Kaaps  453,  1871. 

9.  Hartung,  23  Fed.  Rep.  187,  1885;  5  Brown  «.  Piper,   91  U.  S.    37, 

Troy  Machinery  Co.  v.  Bunnell,  27  1875. 

Fed.   Rep.  810,  1886;  Union  Edge  •  Roberts  «.  Ryer,  91  U.  S.  157, 

Setter  Co.  v.  Keith,  31  Fed.  Rep.  46,  1875. 


CHAP.   II.] 


INVENTION. 


37 


change  the  form  and  proportions  of  the  compartments  of  a 
refrigerator,  so  as  to  utilize  the  descending  instead  of  the 
ascending  current  of  endlessly  circulating  air,  was  but  a 
double  use  of  that  refrigerator. 

Many  other  cases  also  embody  the  rule  of  this  section, 
and  apply  it  to  particular  double  uses  of  old  inventions. ' 

An  exception  to  the  general  rule  of  this  section  consists 
in  the  lately  established  proposition  that  where  a  new  use 
of  an  old  thing  consists  in  combining  it  with  other  things 
in  new  organization,  invention  may  be  present ; "  and  another 
exception  to  the  general  rule  appears  to  reside  in  the  prop- 
osition that  invention  may  be  present  in  a  new  use  of  an 
old  process  where  the  applicability  of  that  process  to  that 
use  was  outside  of  the  knowledge  and  belief  of  persons 
skilled  in  the  art  to  which  the  new  use  pertained.  * 

§  39.  The  rule  of  the  last  section  is  an  easy  one  to  apply 
to  a  case  to  which  it  is  relevant,  if  the  thing  or  process 


1  King  v.  Gallun,  109  U.  S.  99, 
1883;  Pennsylvania  Railroad  Co.  v. 
Truck  Co.  110  U.  S.  494, 1883;  Blake 
v.  San  Francisco,  113  U.  S.  679, 1884; 
Miller  t.  Force,  116  U.  S.  27,  1885; 
Dreyfus  v.  Searle,  124  U.  S.  63, 
1887;  Hendy  «.  Iron  Works,  127  U. 
S.  375,  1887;  Crescent  Brewing  Co. 
v.  Gottfried,  128  U.  S.  169,  1888; 
Peters  v.  Active  Mfg.  Co.  129  U.  S. 
530,  1888;  Peters  v.  Hanson,  129  U. 
S.  541,  1888;  Bean  v.  Smallwood,  2 
Story,  408, 1843;  Meyer  v.  Pritchard. 
1  Bnun.  &  Ard.  261,  1874;  Adams  v. 
Loft,  4  Bann.  &  Ard.  496,  1879; 
Royer  v.  Mfg.  Co.  20  Fed.  Rep. 
8'>3,  1884;  Howe  Machine  Co.  t>. 
Needle  Co.  21  Fed.  Rep.  630,  1884; 
Spill  v.  Celluloid  Mfg.  Co.  21  Fed. 
Rep.  639,  1884;  Celluloid  Mfg.  Co. 
«.  Noyes,  25  Fed.  Rep.  319,  1885; 
Aron  «.  Manhattan  Ry.  Co.  26  Fed. 
Rep.  317, 1886;  Marchand  v.  Emken, 
26  Fed.  Rep.  629,  1886;  Shenfield  t>. 
Mfg.  Co.  27  Fed.  Rep.  808,  1886; 


Busell  Trimmer  Co.  v.  Stevens,  28 
Fed.  Rep.  575,  1886;  Gloucester 
Isinglass  &  Glue  Co.  «.  Le  Page,  30 
Fed.  Rep.  370,  1887;  Ansonia  Brass 
&  Copper  Co.  v.  Electrical  Supply 
Co.  32  Fed.  Rep.  81,  1887;  Acme 
Hay  Harvesting  Co.  «.  Martin,  33 
Fed.  Rep.  249,  1888;  Mann's  Car 
Co.  t>.  Monarch  Car  Co.  34  Fed. 
Rep.  130, 1888;  Babcock  &  Wilcox 
Co.  v.  Pioneer  Iron  Works,  34 
Fed.  Rep.  338,  1888;  Ansonia  Brass 
&  Copper  Co.  t.  Electrical  Sup- 
ply Co.  35  Fed.  Rep.  68,  1888; 
Rubber  Harness  Trimming  Co.  e. 
Rubber  Comb  Co.  35  Fed.  Rep. 
498,  1888;  Hale  &  Kilbourn  Mfg. 
Co.  v.  Hartford  Mattress  Co.  36  Fed. 
Rep.  762,  1888;  Schmid  ».  Mfg.  Co. 
87  Fed.  Rep.  345,  1889. 

8  Telephone  Cases,  126  U.  S.  572, 
1887. 

»  Cary  t>.  Wolff,  24  Fed.  Rep.  139, 
1885. 


38  INVENTION.  [CHAP.  n. 

covered  by  the  patent  in  that  case  is  used  for  the  new  pur- 
pose, without  being  changed  either  in  construction  or  mode 
of  operation.  That  is,  however,  not  always  the  fact;  and 
where  it  is  not  the  fact,  the  rule  is  of  but  minor  practical 
utility  as  a  guide  to  a  just  conclusion.  It  does  not  apply 
to  using  any  new  thing  for  a  new  purpose  ;  and  in  order  to 
apply  it  to  anything  which  differs  somewhat  from  the  most 
similar  thing  that  preceded  it,  it  is  necessary  first  to  deter- 
mine whether  that  difference  constitutes  legal  novelty :  to 
determine  whether  the  thing  covered  by  the  patent  is  really 
old.  That  question  must  be  investigated  by  the  aid  of  rules 
other  than  that  of  the  last  section  ;  and  when  it  is  deter- 
mined in  the  negative,  it  will  follow  that  the  rule  of  that  sec- 
tion does  not  apply  to  the  case. 

§  40.  Want  of  invention,  if  it  really  exists  in  a  particular 
process  or  thing,  can  nearly  always  be  detected  by  one  or 
another  of  the  foregoing  rules.  When  a  case  arises  to  which 
neither  of  them  applies,  and  relevant  to  which  the  mind 
remains  in  uncertainty,  that  uncertainty  may  be  removed 
by  means  of  the  rule  in  Smith  v.  The  Dental  Vulcanite 
Co.,  *  namely  :  When  the  other  facts  in  a  case  leave  the 
question  of  invention  in  doubt,  the  fact  that  the  device  has 
gone  into  general  use,  and  has  displaced  other  devices  which 
had  previously  been  employed  for  analogous  uses,  is  suffi- 
cient to  turn  the  scale  in  favor  of  the  existence  of  invention. 

§  41.  To  change  the  form  of  a  machine  or  manufacture  is 
sometimes  invention,  and  sometimes  it  is  not  invention. 
Where  a  change  of  form  is  within  the  domain  of  mere  con- 
struction, it  is  not  invention  ;  but  where  it  involves  a  change 
of  mode  of  operation,  or  a  change  of  result,  it  is  invention, 
unless  it  is  held  to  be  otherwise  in  pursuance  of  some  rule 
other  than  any  which  relates  to  form.11 

1  Smith  v.  Dental  Vulcanite  Co.  310,  1827;  Mabie  v.  Haskell,  2  Cliff, 

93  U.  S.  495,  1876;  Hollister  v.  Mfg.  510,  1865;  Aiken  v.  Dolan,  3  Fisher, 

Co.  113  U.  S.  72,  1884;  Hill  v.  Biddle,  204,  1867;  United  States  Bung  Mfg. 

27  Fed.  Rep.  560,  1886.  Co.    v.   Independent  Bung   Co.    31 

*  Winans  v.  Denmead,  15  Howard,  Fed.  Rep.  76,  1887. 
841,  1853;  Davis  v.  Palmer,  2  Brock, 


CHAP.   II.]  INVENTION.  39 

§  42.  A  question  of  invention  is  a  question  of  fact  and  not 
of  law  ;  *  though  it  is  to  be  determined  by  means  of  the 
rules  of  law  set  forth  in  this  chapter.  In  applying  those 
rules,  patents  are  not  held  void  for  want  of  invention  except 
where  invention  is  clearly  absent.  .* 

§  43.  Every  inventor  or  constructor  is  presumed  by  the 
law  to  have  borrowed  from  another  whatever  he  produces 
that  was  actually  first  invented  and  used  by  that  other.1  It 
follows  that  such  of  the  foregoing  rules  as  involve  an  in- 
quiry into  the  state  of  the  art  to  which  the  thing  or  process 
in  controversy  pertains,  may  involve  an  inquiry  into  the 
date  and  the  character  of  inventions  which  were  in  fact 
unknown  to  the  patentee,  when  he  produced  that  thing  or 
process.  Such  an  inquiry  ought  not,  however,  to  include 
anything  which,  had  it  been  identical  with  that  thing  or 
that  process,  would  not  have  negatived  its  novelty.  What 
prior  things  will  not  have  the  latter  effect  is  fully  explained 
in  the  third  chapter  of  this  book. 

§  44.  It  was  shown  in  Section  23  that  patents  are  grant- 
able  for  nothing  but  inventions.  It  is  also  the  law  that 
they  can  be  granted  only  to  those  who  invented  the  inven- 
tions they  respectively  cover,  or  to  the  assignees  or  legal 
representatives  of  those  persons.  The  subjects  of  assign- 
ments and  devolutions  of  inventions  and  patents  are  ex- 
plained in  the  chapter  on  title,  but  this  is  the  proper  place 
in  which  to  treat  the  subjects  of  joint  invention  and  sole 
invention. 

§  45.  If  A.  B.  notices  the  need  of  a  new  machine  to  per- 
form a  particular  function,  and  thereupon  conceives  the 
plan  of  such  a  machine,  and  proceeds  to  embody  that  plan 
in  a  successful  working  structure,  and  does  all  this  without 
assistance  from  any  other  person,  then  it  is  clear  that  he  is 
a  sole  inventor  of  that  machine.  If,  on  the  other  hand,  C. 
D.  notices  the  need  of  a  new  machine  to  perform  a  par- 

1  Poppenhusen  t.  Falke,  5  Blatch.  421,  1888;    Marvin   «.  Gotshall,  36 

49,  1862;   Shuter  t>.  Davis,  16  Fed.  Fed.  Rep.  908,  1888. 

Rep.  564,  1883.  *  Crompton  v.   Knowles,   7  Fed. 

8  Reiter  t>.   Jones,   35  Fed.  Rep.  Rep.  203,  1881. 


40  INVENTION.  [CHAP.  II. 

ticular  function,  and  calls  the  attention  of  E.  F.  to  the 
matter,  and  a  successful  invention  is,  after  many  conver- 
sations between  the  two,  embodied  in  a  working  machine 
constructed  by  the  hands  of  both,  then  it  may  be  that  C. 
D.  is  the  sole  inventor,  or  it  may  be  that  E.  F.  is  the  sole 
inventor,  or  it  may  be  that  both  are  joint  inventors  of  the 
machine  they  produced.  Upon  what  considerations  the 
fact  on  this  point  depends  it  is  now  in  order  to  point  out. 

§  46.  Every  machine,  before  it  can  be  used,  must  be  con- 
structed as  well  as  invented.  If  one  man  does  all  the  in- 
venting and  another  does  all  the  constructing,  the  first  is 
the  sole  inventor.  Equally  axiomatic  is  the  proposition 
that  if  both  participate  in  the  inventing  they  are  joint 
inventors,  regardless  of  whether  both  take  part  in  the  con- 
structing. Plainly  true  as  this  last  doctrine  appears  to  be, 
there  are  several  Circuit  Court  decisions  with  which  it  is 
not  perfectly  harmonious. 

Justice  NELSON  once  decided  that  where  A.  B.  aided  C. 
D.  to  invent  a  machine,  but  did  not  furnish  all  the  informa- 
tion necessary  to  complete  the  invention,  and  where  C.  D. 
thereupon  did  the  required  residue  of  the  inventing,  and 
did  all  of  the  constructing  of  the  machine  without  further 
help,  he  was  the  sole  inventor  of  that  machine.1 

Justice  SWAYNE,  on  the  other  hand,  decided  that  where 
A.  B.  drew  a  sketch  in  sand  to  represent  his  ideas  of  a  pos- 
sible improvement  of  a  portable  steam  engine,  and  where 
C.  D.  from  that  sketch  made  working  drawings,  and  from 
those  drawings  built  a  working  engine,  without  further 
interference  or  suggestion  from  A.  B.,  the  latter  was  the 
sole  inventor  of  the  improvement  so  produced.8 

Now,  if  we  apply  the  doctrine  of  Justice  NELSON  to  the 
facts  passed  upon  by  Justice  SWAYNE,  we  shall  probably  be 
driven  to  the  conclusion  that  C.  D.,  and  not  A.  B.,  was  the 
sole  inventor  of  that  improvement  in  steam  engines,  because 
it  is  very  improbable  that  any  mere  sketch  in  sand  furnished 


1  Pitts   v.   Hall,   2   Blatch.    229,          J  Blandy  v.  Griffith,  3  Fisher,  609, 
1851.  1869. 


CHAP.  II.]  INVENTION.  41 

C.  D.  with  all  the  information  necessary  to  complete  that 
invention.  There  must  have  been  something  which,  in  the 
language  of  Justice  NELSON,  "  was  left  for  him  to  devise  and 
work  out  by  his  own  skill  or  ingenuity,  in  order  to  complete 
the  arrangement." 

In  the  case  before  Justice  NELSON  it  was  C.  D.,  and  in 
that  before  Justice  S WAYNE  it  was  A.  B.,  who  had  obtained  a 
sole  patent.  In  each  case  the  defendant  insisted  that  the 
other  man  concerned  in  the  production  of  the  invention, 
and  not  the  patentee,  was  the  sole  inventor ;  and  in  both 
cases  that  contention  was  evidently  unfounded  in  fact. 
The  patents  were  prima  facie  evidence  of  their  own  va- 
lidity, and  not  being  attacked  at  their  vulnerable  points 
were  necessarily  sustained.  Had  the  defendant  in  either 
case  urged  the  defence  of  joint  invention  as  being  fatal  to  a 
sole  patent,  then  the  true  question  would  have  been  before 
the  court,  and  the  charge  to  the  jury  in  the  first  case,  or 
the  opinion  of  the  judge  in  the  other,  would  have  been 
adapted  to  that  issue.  The  failure  of  counsel  to  take  the 
proper  ground  of  defence  in  the  two  cases  deprived  the 
profession  and  the  public  of  what  would  doubtless  have 
been  very  instructive  deliverances  relevant  to  the  point 
under  present  inspection.  Taking  into  account,  however, 
the  facts  of  the  two  cases  and  the  lack  of  harmony  between 
the  doctrines  involved  in  the  two  opinions,  it  is  safest  to  lay 
them  both  out  of  view  in  the  present  connection.  Both 
cannot  be  followed  by  the  Supreme  Court,  and  it  is  not 
probable  that  either  will  be.  The  question  has  never  been 
squarely  presented  to  that  tribunal ;  but  when  it  is  so  pre- 
sented it  will  doubtless  be  decided  that  where  two  or  more 
persons  exercised  their  inventive  faculties  in  the  mutual 
production  of  a  new  and  useful  process  or  thing,  those  per- 
sons are  joint  inventors  thereof,  regardless  of  whether  one, 
or  part,  or  all,  or  neither  of  those  persons  constructed  or 
helped  to  construct  the  first  specimen  of  that  thing,  or  per- 
formed or  helped  to  perform  the  first  instance  of  that  pro- 
cess. 


42  INVENTION.  [CHAP.  n. 

§  47.  The  case  of  the  Agawam  Co.  v.  Jordan '  is  not  incon- 
sistent with  what  is  advanced  at  the  close  of  the  last  section. 
The  defendant  in  that  case  did  not  set  up  a  joint  invention 
by  the  patentee  and  another,  but  set  up  an  alleged  sole  in- 
vention by  that  other,  of  the  thing  patented.  The  most 
that  it  could  get  its  witness  to  testify,  however,  was  that  he 
suggested  to  the  patentee  one  of  the  parts  of  one  of  the  com- 
binations secured  by  the  patent,  but  that  the  patentee  him- 
self contrived  the  devices  by  means  of  which  that  part  was 
incorporated  into  that  combination.  The  patentee  did  not 
claim  the  suggested  part  as  his  invention,  but  only  claimed 
several  new  combinations  of  old  devices,  and  among  the 
number  a  combination  of  several  things,  one  of  which  was 
said  to  have  been  suggested  by  the  defendant's  witness. 
In  that  state  of  facts  it  was  clear  that  the  latter  was  neither 
sole  nor  joint  inventor  of  anything  covered  by  the  patent, 
and  accordingly  the  Supreme  Court  so  decided. 

§  48.  In  order  to  make  an  invention  of  importance,  a  con- 
siderable fund  of  general  knowledge  must  be  possessed  by 
the  inventor.  Where  that  fund  was  acquired  before  he 
undertook  his  invention,  it  is  easy  to  see  that  those  who 
imparted  it  are  not  thereby  made  joint  inventors  with  him. 
Though  not  quite  so  obvious,  it  is  equally  certain  that  if, 
pending  his  experiments,  an  inventor  seeks  and  secures  one 
point  of  information  from  a  scientist,  and  another  from  a 
machinist,  and  a  third  from  a  book,  he  is  not,  on  account  of 
having  done  the  first  two,  any  less  a  sole  inventor  than  he 
is  on  account  of  having  done  the  last.2 

§  49.  To  constitute  a  man  an  inventor,  it  is  not  necessary 
for  him  to  have  skill  enough  to  embody  his  invention  in  a 
working  machine,  or  in  a  model,  or  even  in  a  drawing.  If  a 
man  furnishes  all  the  ideas  needed  to  produce  the  invention 
aimed  at,  he  may  avail  himself  of  the  mechanical  skill  of 
others,  to  practically  embody  or  represent  his  contrivance, 
and  still  be  the  sole  inventor  thereof.3  But  it  is  not  inven- 

1  Agawam  Co.  v.  Jordan,  7  Wai-      62,  1853. 

lace,  583,  1868.  3  Sparkman  v.  Higgins,  1  Blatch. 

2  O'Reilly  v.  Morse,  15  Howard,       209,    1846;     Stearns    v.    Davis,    1 


CHAP.  II.]  INVENTION.  43 

tion  to  conceive  a  result,  and  then  employ  another  to  pro- 
duce that  result.' 

§  50.  Under  the  statute,  only  he  or  they  who  have  invented 
a  particular  thing  can  lawfully  obtain  a  patent  therefor,  ex- 
cept in  cases  where  the  applicant  is  an  assignee  or  legal 
representative  of  the  true  inventor  or  inventors.  It  follows 
that  if  one  of  two  or  more  persons  obtains  a  patent  for  a 
process  or  thing  which  was  jointly  invented  by  them-  all, 
that  patent  is  not  valid.*  In  such  a  case  it  is  not  true  that 
the  patentee  invented  the  thing  patented.  He  only  helped 
to  invent  it.  If  he  could  have  a  valid  patent  for  that  thing 
or  process,  each  of  his  co-inventors  could  do  likewise,  and 
each  of  several  persons  would  possess  the  exclusive  right 
to  the  same.  As  to  each  other,  such  a  state  of  affairs 
among  patentees  would  be  impossible,  and  as  to  the  public 
it  would  be  intolerable. 

§  51.  So  also  if  several  persons  obtain  a  joint  patent  for 
what  was  invented  solely  by  one  of  them,  that  patent  is 
void.1  There  is  no  statutory  authority  to  grant  a  patent  to 
a  non-inventor  jointly  with  an  inventor,  without  an  assign- 
ment or  a  death,  any  more  than  there  is  to  grant  a  patent 
to  a  non-inventor  alone.  But  very  convincing  evidence  is 
required  to  establish  the  invalidity  of  a  patent  on  the  ground 
stated  in  this  section.4 


McArthur's     Patent    Cases,     696,  4  McLean,  461, 1848;  Barrett  v.  Hall, 

1859.  1  Mason,  473,  1818;  Royer  v.  Coupe, 

1  Streat  v.  White,  35  Fed.  Rep.  29  Fed.  Rep.  363,  1886;   Stewart  v. 

426,  1888.  Tenk,  32  Fed.  Rep.  665,  1887. 

J  Arnold  v.  Bishop,  1  McArthur's  4  Button  Fastener  Co.  v.  Lucas, 

Patent  Cases,  36,  1841;  H.  T.  Slem-  28  Fed.  Rep.  371,  1886;  Schlicht  & 

mer's  Appeal,  58  Penn.  164,  1868.  Field  Co.   v.  Machine  Co.  46  Off. 

*  Ransom  «.  New  York,  1  Fisher,  Gaz.  1394,  1888. 
269,  1856;  Hotchkiss  v.  Greenwood, 


CHAPTER  III. 


NOVELTY. 


52.  Novelty   necessary   to    patent- 
ability. 

53.  Novelty  defined. 

54.  Not  negatived  by  knowledge  or 
use  in  a  foreign  country. 

55.  Not  negatived  by  private  patent 
granted  in  a  foreign  country. 

56.  Prior  printed  publications. 

57.  Fulness    of   prior  patents    and 
printed  publications. 

58.  Novelty  not  negatived  by  any 
abandoned  application. 

59.  Qualification  of  the  last  rule. 

60.  Successful  prior  applications. 

61.  Novelty  not  negatived  by  any 
unpublished  drawing,  or  prior 
model. 

62.  Novelty  not  negatived  by  any- 
thing substantially  different. 

63.  Abandoned  experiments. 

64.  Novelty  in  cases  of  designs. 

65.  Novelty  not  negatived  by  any- 
thing    apparently    similar    or 
chemically  identical,  but  prac- 
tically useless. 


66.  Novelty  not  negatived  by  an- 
tiquity of  parts. 

67.  Novelty  not  negatived  by  prior 
accidental  and  not  understood 
production. 

68.  Novelty  not  negatived  by  any- 
thing neither  designed,  nor  ap- 
parently adapted,  nor  actually 
used  for  the  same  purpose  as  the 

69.  Comparative  dates,     [invention. 

70.  Dates  of  patented  inventions. 

71.  Novelty  is  negatived  by  one  in- 
stance of  prior  knowledge  and 
vise  in  this  country. 

72.  Novelty  is  negatived  by  prior 
making  without  using. 

73.  Inventor's  lack  of  knowledge  of 
anticipating   matter   is   imma- 
terial. 

74.  Old   thing   derived   from   new 
source. 

75.  Questions  of  novelty  are  ques- 
tions of  fact. 

76.  Burden   of    proof   relevant   to 
novelty. 


§  52.  THE  statutes  of  the  United  States  have  always  pro- 
vided that  anything  to  be  patentable  must  be  new.  State- 
ments that  some  things  are  not  patentable  because,  though 
new  in  a  commercial  sense,  they  are  not  new  in  the  eye  of 
the  patent  law,  occur  in  a  few  reported  cases.  In  every 
such  instance,  however,  it  would  have  been  more  accurate 
to  say  that  some  things  are  not  patentable  because,  though 
new  things,  they  are  not  invented  things.  Such  things  lack 
patentability  not  because  they  lack  newness,  but  because 
44 


CHAP.  III.]  NOVELTY.  45 

they  lack  invention.  The  subject  belongs  to  the  domain 
of  invention  and  not  to  that  of  novelty,  and  it  is  therefore 
treated  in  the  second  chapter  of  this  book.  With  this 
explanation,  it  is  not  untrue  or  misleading  to  say  that 
whatever  is  really  new,  is  new  in  the  eye  of  the  patent 
law. 

§  53.  Many  things  are  new  in  the  eye  of  the  patent  statutes 
in  addition  to  those  things  which  are  really  new.  The  word 
has,  therefore,  a  broader  signification  in  those  statutes  than 
it  has  in  the  dictionaries ;  but  that  broader  meaning  is  not 
capable  of  a  short  definition.  Novelty  is  the  conventional 
name  of  that  statutory  newness,  but  that  name  does  not  in- 
dicate the  boundaries  of  the  thing  which  it  denotes.  Those 
boundaries  can  be  delineated  only  by  enumerating  and 
explaining  those  classes  of  facts  which  fall  within  them, 
but  which  fall  without  the  boundaries  of  actual  newness : 
those  classes  of  facts  which  negative  newness,  but  which  do 
not  negative  novelty. 

§  54.  Novelty  is  not  negatived  by  prior  knowledge  and 
prior  use  in  a  foreign  country  of  the  thing  patented,  pro- 
vided the  patentee,  at  the  time  of  making  his  application 
for  a  United  States  patent,  believed  himself  to  be  the  first 
inventor  of  the  thing  covered  thereby,  and  provided  that 
thing  had  nowhere  been  patented  to  another,  and  nowhere 
been  described  in  a  printed  publication.1 

Knowledge  in  the  mind  of  a  man  who  lives  in  this  country, 
that  the  patented  thing  was  known  and  used  in  a  foreign 
country  before  its  invention  here,  is  not  such  knowledge  in 
this  country  as  will  negative  the  novelty  of  the  patent 
covering  that  thing.11 

§  55.  Novelty  is  not  negatived  by  any  prior  private  patent 
granted  in  any  foreign  country,'  nor  by  any  public  patent 
granted  in  England,  unless  the  complete  specification  of  the 
latter  was  filed  before  the  person  obtaining  the  American 


1  Revised  Statutes,  Sections  4887      746,  1884. 

and  4923.  *  Brooks   v.  Norcross,  2  Fisher, 

*  Doyle  v.  Spalding,  19  Fed.  Rep.      661,  1851. 


46  NOVELTY.  [CHAP.  in. 

patent  made  the  invention.1  In  neither  of  those  two  cases 
can  it  be  truly  said  that  the  invention  was  antecedently  pat- 
ented in  a  foreign  country,  that  is,  made  patent  to  the  pub- 
lic, and  therefore  such  transactions  do  not  come  within  the 
statute.  On  the  other  hand,  it  is  safe  to  say  that  novelty 
would  be  negatived  by  a  full  description  in  the  specification 
of  a  prior  public  patent  of  the  thing  covered  by  an  Ameri- 
can patent,  even  though  that  thing  was  not  covered  by  the 
claims  of  the  prior  patent,  and  therefore  not  patented  to  the 
prior  inventor.4  This  doctrine  must  result  from  the  fact 
that  whatever  is  well  described  in  a  patent  is  patented,  that 
is,  made  patent  to  the  public,  whether  it  is  claimed  by  the 
patentee  or  not.  Indeed  the  Supreme  Court  has  decided 
that  novelty  is  negatived  by  a  prior  patent  which  shows  the 
device  in  its  drawings  and  describes  it  in  the  specification, 
but  does  not  clearly  state  its  use. 

§  56.  A  printed  publication  is  anything  which  is  printed, 
and,  without  any  injunction  of  secrecy,  is  distributed  to  any 
part  of  the  public  in  any  country ;  and  such  a  publication 
may  negative  novelty.4  Indeed,  it  seems  reasonable  that  no 
actual  distribution  need  occur,  but  that  exposure  of  printed 
matter  for  sale  is  enough  to  constitute  a  printed  publication. 
Whether  a  drawing,  either  in  a  patent  or  a  printed  publicar 
tion,  if  unaccompanied  by  description  in  words,  will  negative 
novelty  is  an  unsettled  question.5  Its  answer  depends  upon 
the  meaning  of  the  word  "  described  "  in  the  statute.  If 
that  meaning  is  confined  to  the  last  definition  of  Webster, 
then  only  description  in  words  can  negative  novelty ;  but  if 
it  covers  also  the  first  definition  of  Webster,  then  repre- 
sentation by  lines,  as  in  a  drawing,  must  have  that  effect. 
Inasmuch  as  drawings  can  generally  give  information  which 
is  as  clear  as  that  which  words  alone  can  give,  relevant  to 


1  Smith  v.  Goodyear  Dental  Vul-  1881. 

canite  Co.  93  U.  S.  498,  1876.  4  Rosenwasser  v.  Spieth,  129  U.  S. 

*  United  States  Bung  Mfg.  Co.  v.  47,  1888. 

Independent  Bung  Co.  31  Fed.  Rep.  B  Judson  ®.  Cope,  1  Fisher,  619, 

79,  1887.  1860;  Reeves  v.  Bridge  Co.  5  Fisher, 

1  Stow  v,  Chicago,  104  U.  S.  547,  456, 1872. 


CHAP.  III.]  NOVELTY.  47 

the  construction  and  character  of  a  machine  or  manufacture, 
there  seems  to  be  no  meritorious  reason  for  their  not  having 
the  same  effect  on  the  novelty  of  subsequent  patents.  No 
injustice  can  result  from  such  a  rule,  because,  in  order  to 
have  any  effect  on  such  novelty,  drawings  as  well  as  words 
must  be  able  to  endure  the  test  stated  in  the  next  section. 

§  57.  Novelty  is  not  negatived  by  any  prior  patent  or 
printed  publication,  unless  the  information  contained 
therein,  is  full  enough  and  precise  enough  to  enable  any 
person  skilled  in  the  art  to  which  it  relates,  to  perform  the 
process  or  make  the  thing  covered  by  the  patent  sought  to 
be  anticipated.1  It  follows  from  this  rule  that  difference  is 
fatal  to  anticipation,  if  that  difference  is  greater  than  any 
which  could  occur  between  two  things,  independently  con- 
structed by  two  skilful  mechanics  from  the  same  specifica- 
tion. The  phrase  "  skilful  mechanic,"  as  used  in  this  con- 
nection, does  not  include  mechanics  who  are  skilful  only 
in  methods  of  servile  imitation.  It  refers  only  to  mechanics 
who  know  how  to  vary  form  without  varying  substance,  and 
who,  in  constructing  a  machine  from  a  printed  description, 
or  from  Patent  Office  drawings,  could  readily  and  would 
freely  alter  proportions  and  change  details  in  order  to 
adapt  the  contrivance  to  a  particular  use,  or  in  order  to 
secure  greater  merit  of  workmanship  for  the  thing  con- 
structed. If  a  difference  greater  than  what  could  arise  in 
this  way,  is  found  to  exist  between  a  patented  thing,  and 
the  thing  described  in  a  prior  patent  or  printed  publication, 
then  the  latter  cannot  negative  the  novelty  of  the  former. 
It  may,  however,  defeat  the  patent  for  want  of  invention, 
though  failing  to  defeat  it  for  want  of  novelty.  Whether 
or  not  it  can  do  so,  is  to  be  ascertained  in  each  case  by 
applying  thereto  the  established  rules  on  the  subject  of 
invention. 

1  Seymours  Osborne,  11  Wallace,  v.  Dickey,  4  Fisher,  532,  1871 ;  Ca- 

516,  1870 ;    Cawood  Patent,  94    U.  hill  v.   Brown.  8  Bann.  &  Ard.  580, 

8.  704,  1876 ;   Downton  t>.  Milling  1878 ;  Hammerschlag  v.  Scamoni,  7 

Co.  108  U.  S.  466,  1882 ;  Eames  v.  Fed.  Rep.  584,  1881. 
Andrews,  122  U.  S.  66, 1886;  Roberts 


48  NOVELTY.  [CHAP.  in. 

§  58.  Novelty  is  not  negatived  by  any  prior  abandoned  ap- 
plication for  a  patent.1  Abandoned  applications  for  patents 
are  not  by  the  statutes  made  bars  to  patents  to  later  appli- 
cants. They  furnish  no  evidence  that  any  specimen  of  the 
things  they  describe  was  ever  made  or  used  anywhere. 
Being  only  pen  and  ink  representations  of  what  may  have 
existed  only  as  mental  conceptions  of  the  men  who  put  them 
upon  paper,  they  do  not  prove  that  the  things  which  they 
depict  were  ever  known  in  any  country.  Nor  can  they  be 
classed  among  printed  publications,  for  they  are  usually  in 
writing,  and  are  not  published  otherwise  than  by  being 
placed  on  file  in  the  Patent  Office. 

§  59.  When  there  is  evidence  that  he  who  made  and 
abandoned  an  application  for  a  patent,  made  also  some 
effort  to  carry  his  invention  into  practical  use,  then  that 
application  is  admissible  in  evidence  to  aid  the  court  to  de- 
termine the  date  and  the  nature  of  the  invention  which  was 
sought  to  be  embodied  in  a  working  form.  If,  however, 
upon  the  whole  of  the  evidence,  it  appears  that  what  the 
inventor  did,  outside  of  his  abandoned  application,  did  not 
amount  to  enough  to  negative  the  novelty  of  a  subsequent 
patent  to  a  later  inventor,  then  that  abandoned  application 
becomes  immaterial  to  that  issue.2  . 

§  60.  Novelty  is  not  negatived  by  any  successful  applica- 
tion for  a  patent,  nor  by  any  documents  pertaining  thereto, 
other  than  the  letters  patent  issued  in  pursuance  thereof.' 
When  such  an  application,  or  such  a  document,  is  offered 
to  prove  the  existence  of  something  which  is  not  shown  by 
the  letters  patent  themselves,  the  justice  and  propriety  of 
this  rule  is  apparent  at  a  glance.  The  rule  necessarily  fol- 
lows from  the  same  considerations  as  those  which  reject  an 
abandoned  application,  when  an  abandoned  application  is 
offered  to  negative  novelty.  But  when  a  successful  appli- 

1  Corn- planter  Patent,    23  Wai-  Lalor,  1  Bann.  &  Ard.  403,  1874. 

lace,  211,  1874;  N.  W.  Extinguisher  *  Corn-planter  Patent,  23  Wallace, 

Co.   v.   Phila.   Extinguisher  Co.  1  211,  1874. 

Bann.  &  Ard.   177,  1874;    Lyman  3  Howes  v.    McNeal,  5  Bann.    & 

Ventilating  &  Refrigerator  Co.  v.  Ard.  77,  1880. 


CHAP.  III.]  NOVELTY.  49 

cation  is  offered  only  to  prove  the  date  of  the  invention 
claimed  in  the  resulting  patent,  a  case  will  occur  which  will 
doubtless  occasion  the  establishment  of  an  exception  to 
the  rule. 

§  61.  Novelty  is  not  negatived  by  any  prior  unpublished 
drawings,  no  matter  how  completely  they  may  exhibit  the 
patented  invention,1  nor  by  any  prior  model,  no  matter  how 
fully  it  may  coincide  with  the  thing  covered  by  the  patent.* 
The  reason  of  this  rule  is  not  stated  with  fullness  in  either 
of  the  cases  which  support  it,  but  that  reason  is  deducible 
from  the  statute,  and  from  the  nature  of  drawings  and  of 
models.  The  statute  provides,  relevant  to.  the  newness  of 
patentable  machines  and  manufactures  and  improvements 
thereof,  that  they  shall  not  have  been  previously  known  or 
used  by  others  in  this  country.3  Now,  it  is  clear  that  to  use 
a  model  or  a  drawing,  is  not  to  use  the  machine  or  manu- 
facture which  it  represents  ;  and  it  is  equally  obvious,  that  to 
know  a  drawing  or  a  model,  is  not  the  same  thing  as  know- 
ing the  article  which  that  drawing  or  model  more  or  less 
imperfectly  pictures  to  the  eye.  It  follows  that  neither  of 
those  things  negative  the  sort  of  newness  required  by  the 
statute.  Nor  is  the  statutory  provision  on  this  point  lack- 
ing in  good  reasons  to  support  it.  Private  drawings  may 
be  mislaid  or  hidden,  so  as  to  preclude  all  probability  of 
the  public  ever  deriving  any  benefit  therefrom  ;  and  even  if 
they  are  seen  by  several  or  by  many,  they  are  apt  to  be 
understood  by  few  or  by  none.  Models  also  are  liable  to 
be  secluded  from  view  and  to  suffer  change,  and  thus  to  fail 
of  propagation.  Moreover,  if  a  patent  could  be  defeated 
by  producing  a  model  or  a  drawing  to  correspond  there- 


1  Ellithorpr.  Robertson,  4  Blatch.  'Gaboon  v.   Ring,   1   Cliff,   593, 

309,    1859;   Draper    «.     Potomska  1861;    Staintborp  v.    Humiston,    4 

Mills.  3  Bann.  &  Ard.  214.   1878;  Fisher,  107,  1864;  Johnson  v.  Me- 

Detroit  Lubricator  Mfg.  Co.  t.  Ren-  Cullougb,  4  Fisher,  170,  1870;  Still- 

chard,  9  Fed.  Rep.  293,  1881;  Odell  well  &  Bierce  Mfg.  Co.  v.  The  Cin- 

c.  Stout,  22  Fed.  Rep.   159,   1884;  cinnati  Gas  Light  &  Coke  Co.  1 

Pennsylvania  Diamond  Drill  Co.  «.  Bann.  &  Ard.  610,  1875. 

Simpson,  29  Fed.  Rep.  291,  1886.  8  RevisedsfitatutojrSect 


Attorney  at  Law, 

-     -     Oal- 


50  NOVELTY.  [CHAP.  in. 

with,  and  by  testifying  that  it  was  made  at  some  sufficiently 
remote  point  of  time  in  the  past,  a  strong  temptation  would 
be  offered  to  perjury.  Several  considerations  of  public 
policy  and  of  private  right  combine,  therefore,  to  justify 
the  rule  of  this  section. 

§  62.  Novelty  is  not  negatived  by  anything  substantially 
different  from  that  covered  by  the  patent,  even  though  the 
function  of  the  prior  thing  was  identical  with  that  of  the 
patented  article.  This  rule  necessarily  follows  from  the 
doctrine  that  a  valid  patent  may  be  granted  for  a  new  means 
of  producing  an  old  result.1  In  order  to  defeat  a  patent 
for  want  of  novelty,  the  anticipating  thing  must  be  substan- 
tially identical  with  that  covered  by  the  patent.  If  a  marked 
and  apparently  important  change  is  found  in  the  patented 
thing,  and  one  which  is  not  assignable  to  mere  omission  of 
parts,5  or  mere  substitution  of  equivalents,3  the  defence  will 
fail.  But  a  thing  which  will  not  defeat  a  patent  for  want 
of  novelty,  may  defeat  it  for  want  of  invention.  It  will  do 
so  wherever  the  observed  difference  corresponds  in  charac- 
ter with  either  of  those  differences  between  a  patented  thing 
and  the  prior  art,  which,  in  the  second  chapter  of  this  book, 
were  shown  to  be  insufficient  to  constitute  invention. 

§  63.  The  rule  of  the  last  section  will  probably  govern 
every  case  which  justly  comes  within  the  doctrine  that  nov- 
elty is  not  negatived  by  any  unsuccessful  abandoned  experi- 
ment. That  rule  is  far  more  reliable  than  that  doctrine, 
because  the  latter  is  subject  to  such  qualifications  and  ex- 
planations, that  its  practical  utility  in  deciding  cases  is  but 
small.  A  thing  may  have  been  abandoned  and  still  nega- 
tive the  novelty  of  a  thing  independently  invented  long  after 
that  abandonment.4  Such  will  be  the  result  if  the  earlier 


1  O'Reilly  r>.  Morse,  15  Howard,  463,  1863 ;  Shoup  v.  Henricl,  2 

62,  1853.  Bann.  &  Ard.  249,  1876;  N.  W.  Ex- 

9  Jennings  v.  Lowenstine,  81  Fed.  tinguisher  Co.  v.  Phila.  Extinguisher 

Rep.  84,  1887.  Co.  1  Bann.  &  Ard.  177,  1874;  Mc- 

3  Hartshorn  «.  Barrel  Co.  119  U.  S.  Nish  v.  Everson,  5  Bann.  &  Ard. 
676, 1886.  484,  1880. 

4  Waterman  c.  Thomson,  2  Fisher, 


CHAP.  III.]  NOVELTY.  51 

thing  was  identical  with  the  later,  and  was  used  long  enough 
to  show  that  it  would  work.1 

If  a  given  experimental  device  was  unsuccessful  in  the 
hands  of  its  contriver,  that  fact  must  have  been  due  either 
to  one  or  more  faults  of  principle,  or  to  one  or  more  faults 
of  construction,  or  to  one  or  more  faults  of  each  of  these 
kinds.  If  partly  or  wholly  due  to  any  fault  of  principle, 
that  very  fact  shows  that  the  unsuccessful  device  was  sub- 
stantially different  from  subsequent  successful  patented 
things.  For  that  reason  alone,  it  would  have  failed  to  nega- 
tive the  novelty  of  those  things  even  if  it  had  not  been  un- 
successful. If,  on  the  other  hand,  a  prior  device  was  un- 
successful merely  because  its  construction  was  faulty,  it  is 
far  from  certain  that  it  will  not  be  held  to  negative  the  nov- 
elty of  all  subsequent  devices  identical  with  it  in  plan,  mode 
of  operation,  and  function. 

The  Stevens  car-brake  can  conveniently  be  used  to  illus- 
trate this  point,  because  the  reader  can  look  upon  a  wood- 
cut of  that  brake  in  Webster's  Dictionary,  and  because  its 
construction  is  particularly  suitable  to  the  question  in 
hand.  Simple  and  excellent  as  that  contrivance  is,  it  was 
not  conceived  till  after  several  more  complicated  and  less 
useful  brakes  were  produced  and  patented.  The  concep- 
tion came  to  the  inventor  in  one  moment  of  time,  though 
after  a  long  study  of  the  problem.  He  knew  then,  as  well 
as  he  ever  did  afterward,  that  the  conceived  combination 
would  certainly  succeed.  Now  suppose  some  other  me- 
chanic in  the  United  States  had  conceived  the  same  appa- 
ratus a  year  earlier,  and  had  promptly  constructed  all  the 
parts  of  the  first  specimen  thereof,  and  had  promptly 
fitted  all  those  parts  together  and  to  a  railroad  car ; 
and  suppose  that  the  chain  F,  being  somewhat  light  in 
proportion  to  the  strain  upon  it,  had  parted  asunder  the 
first  time  the  apparatus  was  attempted  to  be  operated,  so 
that  no  result  was  produced ;  and  suppose  that,  because  of 

1  Gayler  «.  Wilder,  10  Howard,  Fisher  588,  1871;  Stephenson  9. 
477,  1850;  Sayles  v.  Railway  Go.  4  Railroad  Co.  14  Fed.  Rep.  459, 1881. 


52  NOVELTY.  [CHAP.  in. 

sickness,  death,  or  other  sufficient  reason,  no  attempt  was 
ever  made  to  mend  or  replace  that  chain,  or  to  again  use  that 
specimen  of  the  apparatus.  Such  events  would  constitute 
an  unsuccessful  abandoned  experiment,  but  nevertheless 
they  would  probably  be  held  to  negative  the  novelty  of  the 
Stevens  patent,  because  they  would  teach  the  public  how 
to  make  and  use  specimens  of  the  Stevens  brake  about  as 
effectually  as  if  the  chain  F  had  not  parted.  It  is  believed 
that  no  precedent  exists  for  an  opinion  contrary  to  this ; 
and  if  one  is  hereafter  discovered  or  made,  it  will  probably 
be  found  to  be  inconsistent  with  at  least  one  decision  of  the 
Supreme  Court.1 

The  truth,  therefore,  appears  to  be  that  an  unsuccessful 
abandoned  experiment  may  possibly  negative  the  novelty 
of  a  later  invention,  and  that  where  it  fails  to  have  that 
effect,  it  would  have  failed,  even  if  it  had  been  neither  un- 
successful nor  abandoned.  Novelty  is  to  be  ascribed  to 
new  things,  regardless  of  whether  old  and  different  things 
were  successful  or  unsuccessful,  abandoned  or  not  aban- 
doned. Novelty  is  to  be  denied  to  old  things,  regardless  of 
the  accidents  which  caused  earlier  specimens  of  the  same 
things  to  fail  to  operate,  or  caused  their  use  to  be  discon- 
tinued. 

§  64.  The  question  of  the  novelty  of  a  design,  is  to  be  de- 
termined by  the  comparative  appearance  of  that  design  and 
of  prior  designs,  in  the  eyes  of  average  observers,  and  not 
by  their  comparative  appearance  in  the  eyes  of  experts 
making  an  analytical  inspection.5  Nor  is  the  novelty  of 
any  design  negatived  by  the  fact  that  all  of  its  features  can 
be  collected  out  of  scattered  prior  designs.3 

§  65.  Novelty  is  not  negatived  by  anything  fundamentally 
incapable  of  the  function  of  the  thing  covered  by  the  patent, 
even  though  the  character  of  the  prior  thing  was  chemically 


1  Pickering  v.  McCullough,  104  23  Fed.  Rep.  402,  1885;  Kraus  v. 

U.  S.  319,  1881.  Fitzpatrick,  34  Fed.  Rep.  39,  1888. 

*  Perry  v.  Starrett.  3  Bann.  &  *  Simpson  v.  Davis,  12  Fed.  Rep. 

Ard.  489,  1878;  Foster  v.  Crossin,  144,  1882. 


CHAP.  III.]  NOVELTY.  53 

identical  with  the  patented  thing,  or  mechanically  similar 
thereto. 

In  Morey  v.  Lockwood '  the  prior  Mau  syringe  was  relied 
upon  to  negative  the  novelty  of  the  syringe  of  Dr.  Davidson 
and  his  brother.  The  latter  is  the  now  well-known  soft 
rubber  bulb  apparatus.  The  former  was  exactly  like  it, 
except  that  the  central  part  was  a  soft  rubber  cylinder  with 
metallic  heads,  instead  of  a  soft  rubber  bulb.  The  mode  of 
operation  of  the  two  syringes  was  identical.  The  Mau  ap- 
paratus proved  to  be  of  no  practical  value,  simply  because 
the  metallic  heads  of  the  cylinder  strongly  counteracted  the 
user's  efforts  to  compress  its  rubber  walls.  Feeble  persons 
could  not  use  it,  and  those  who  had  enough  muscular  power 
did  not  care  to  perform  the  needed  labor.  Practically, 
therefore,  the  Mau  syringe  proved  to  be  of  no  value,  and 
very  few  were  ever  sold.  For  these  reasons  the  Supreme 
Court  held  that  it  did  not  negative  the  novelty  of  the  Da- 
vidson patent. 

The  Wood  Finishing  Co.  v.  Hooper  *  is  a  case  the  patent 
involved  in  which,  covered  the  employment  of  finely  pow- 
dered flint,  quartz,  or  feldspar,  mixed  with  oil  or  other 
fluent  substance,  for  the  purpose  of  filling  the  pores  of  the 
surface  of  wood.  A  prior  patent  had  been  granted  for  the 
employment  of  silicious  marl  or  infusorial  earth  for  the 
same  purpose.  It  was  shown  that  all  five  of  these  sub- 
stances consisted  mainly  of  silica  or  the  oxide  of  silicon, 
but  that  the  first  three  differed  from  the  last  two  in  being 
non-absorbent  instead  of  porous,  and  in  consisting  of 
angular  instead  of  rounded  particles.  These  two  differences 
made  the  first  three  substances  very  valuable  for  wood-fill- 
ing, whereas  the  others  were  not  valuable  for  that  purpose. 
Judge  NATHANIEL  SHIPMAN,  therefore,  decided  that  the  prior 
patent  did  not  negative  the  novelty  of  the  later  one. 

§  66.  Novelty  is  not  negatived  by  the  fact  that  every  part 
of  the  patented  thing  is  old.'  This  rule  necessarily  follows 

1  Morey  t>.  Lockwood,  8  Wallace,      «.  Hooper,  5  Fed.  Rep.  63,  1880. 
230,  1868.  «  Bates  v.  Coe,  98  U.  8.  48,  1878; 

*  Bridgeport  Wood  Finishing  Co.       Imhaeuser  «.  Buerk,  101  U.  S.  660, 


54  NOVELTY.  [CHAP.  in. 

from  the  doctrine  which  allows  patents  for  new  combina- 
tions of  old  devices.  In  such  cases  the  whole  is  different 
from  the  sum  of  all  its  parts,  precisely  as  this  printed  page 
is  different  from  what  it  would  be  if  the  same  words  were 
arranged  in  alphabetical  order,  or  were  printed  promiscu- 
ously upon  the  paper.  If,  however,  a  new  assemblage  of 
old  things  amounts  only  to  aggregation  and  not  to  combina- 
tion, or  if  it  results  in  no  new  mode  of  operation,  the  patent 
which  covers  it  will  be  void  for  want  of  invention,1  though 
not  void  for  want  of  novelty. 

§  67.  Novelty  is  not  negatived  by  any  prior  accidental 
production  of  the  same  thing,  unaccompanied  by  knowledge 
on  the  part  of  the  producer  sufficient  to  enable  him  to  re- 
peat that  production.3  The  reason  of  this  rule  arises  out 
of  that  point  of  patent  law  policy  which  rewards  persons 
for  teaching  the  public  how  to  perform  processes  and  con- 
struct things  which  nobody  else  in  the  United  States  knew 
how  to  perform  or  to  construct,  and  relevant  to  which  no 
adequate  information  could  be  found  in  any  public  patent 
or  printed  publication  anywhere  in  the  world.  But  novelty 
is  negatived  by  proof  of  prior  use,  where  that  use  was 
understood  in  point  of  method,  though  not  correctly  under- 
stood in  point  of  result.3 

§  68.  Novelty  is  not  negatived  by  anything  which  was 
neither  designed,  nor  apparently  adapted,  nor  actually  used, 
to  perform  the  function  of  the  thing  covered  by  the  patent, 
though  it  might  have  been  made  to  perform  that  function 
by  means  not  substantially  different  from  that  of  the  pat- 
ented invention.4  This  rule  rests  upon  the  same  reason  as 
the  rule  of  the  last  section,  and  is  even  more  favorable  to 


1879;  Parks  «.  Booth,  102  U.  8.  104,  man,  2  Bann.  &  Ard.  277,  1876. 

1880;  Cantrell  c.  Wallick,  117  U.  S.  3  Dorlon  v.  Guie,   25  Fed.    Rep. 

694,  1885;  Johnson  v.  Railroad  Co.  816,  1885. 

38  Fed.  Rep.  501,  1888.  4  Clough   v.  Mfg.  Co.  106  U.  S. 

1  Sections  32  and  37  of  this  book.  178,  1882;  Bell  Telephone  Co.  ».  Dol- 

2  Ransom  v.  New  York.  1  Fisher,  bear,  17  Fed.  Rep.  605,  1883;  Kittle 
265, 1856;  Pelton  v.  Waters,  1  Bann.  v.  Hall,  29  Fed.  Rep.  514,  ,1887. 

&  Ard.  599.  1874;  Andrews  v.  Car- 


CHAP.  III.]  NOVELTY.  55 

patentees  than  that.  Though  recently  established,  it  is 
established  thoroughly,  inasmuch  as  it  is  the  result  of  re- 
peated and  careful  consideration  by  one  of  the  ablest  patent 
jurists  in  the  United  States,  and  inasmuch  as,  in  establish- 
ing it,  his  associates  on  the  Supreme  bench  concurred  with 
him  in  reversing  his  own  decision  on  the  circuit. 

The  rule  of  this  section  cannot  govern  any  case  which 
lacks  either  of  the  circumstances  upon  which  it  is  founded, 
for  negation  of  novelty  is  not  averted  by  the  mere  fact  that 
the  inventor  of  the  prior  device  did  not  design  it  to  perform 
the  function  of  the  patented  device,1  nor  by  the  mere  fact 
that  its  ability  to  perform  that  function  is  not  apparent  to 
every  beholder,  nor  by  the  mere  fact  that  it  was  never  ac- 
tually used  for  that  purpose,  nor  by  any  two  of  these  facts 
combined. 

§  69.  Novelty  is  not  negatived  by  anything  which  was  in- 
vented, patented,  or  described  in  a  printed  publication  prior 
to  the  granting  of  the  patent  sought  to  be  anticipated,  or 
even  prior  to  the  application  therefor,  unless  the  anticipat- 
ing event  occurred  prior  to  the  date  of  the  invention  se- 
cured by  that  patent.1 

One  apparent  exception  to  this  rule  has  been  stated  in  an 
obiter  dictum  by  the  Supreme  Court,3  and  indorsed  in  an- 
other obiter  dictum  by  Judge  McKiNNON/  In  those  in- 
stances it  was  said  that  where  two  patents  for  the  same 
invention  are  granted  to  the  same  inventor,  the  last  and  not 
the  first  is  void,  even  where  the  last  was  first  applied  for. 
The  exception  is  however  only  apparent,  because  the  patent 
last  applied  for  is  as  much  entitled  to  date  from  the  mak- 
ing of  the  invention  as  the  other.  The  date  of  invention 
assignable  to  the  two  patents  being  exactly  the  same,  the 
first  patent  will  negative  the  novelty  of  the  last,  regardless 

1  Leonard  «  Lovell,  29  Fed.  Rep.  Sawyer,  1  Fisher,  520,  18.19. 

315,  1886.  »  Suffolk  Co.  «.  Haydcn,  3  Wai- 

*  Cochrane  t>.  Deener,  94  U.S.  791.  lace,  315,  1865. 

1876;  Elizabeth  v.  Pavement  Co.  97  4  M'Milliii  v.   Rees,    5    Bann.   & 

U.  S.  130.  1877;  Parker  t.  Huline,  1  Ard.  239,  1880. 
Fisher,   52,   1849;  Bartholomew   v. 


5G  NOVELTY.  [CHAP.  III. 

of  which  was  first  applied  for.  The  dictum  of  the  Supreme 
Court  in  this  matter  is  not  inconsistent  with  Judge 
LOWELL'S  decision,1  that,  "  in  the  absence  of  other  evidence 
of  the  dates  of  invention,  the  first  application  must  be 
taken  to  represent  the  first  invention ;"  because  the  fact 
of  an  identical  inventor  is  evidence,  in  such  cases,  that  the 
date  of  invention  was  identical.  No  man  can  make  one  in- 
vention at  two  different  times. 

And  the  dictum  in  Suffolk  Co.  v.  Hayden  has  no  appli- 
cability to  a  case  where  an  inventor  takes  out  a  patent 
which  describes  and  claims  what  was  described  but  not 
claimed  in  a  prior  patent  of  his  ;  because  in  such  a  case  the 
prior  patent  is  not  for  the  same  invention  as  the  last.2 

§  70.  In  order  to  apply  the  rule  of  the  last  section,  it  is 
necessary  to  fix  the  date  of  the  invention  covered  by  the 
patent  sought  to  be  anticipated.  In  cases  where  the  in- 
vention may  be  exhibited  in  a  drawing  or  in  a  model,  it  will 
date  from  the  completion  of  such  a  model  or  such  a  drawing 
as  is  sufficiently  plain  to  enable  those  skilled  in  the  art  to 
understand  the  invention  ; 3  and  patented  inventions  always 
date  at  least  as  early  as  the  dates  of  the  execution  of  the 
original  applications  therefor,  provided  the  original  applica- 
tions exhibit  the  inventions  with  the  above-mentioned  ex- 
tent of  sufficiency."  In  cases  where  a  patented  invention  was 
explained  in  words,  without  the  aid  of  any  model  or  any 
drawing,  it  will  date  from  the  completion  of  such  a  written 
description  as  would  teach  'others  how  to  make  and  use  the 
invention  described.  In  cases  where  the  inventor  makes  a 
specimen  of  the  thing  invented  before  he  makes  any  model, 
or  drawing,  or  written  description  to  represent  that  thing,  the 


1  Pennington  t.  King,  7  Fed.  Rep.  ent  Cases,  78,  1847:  Farley  v.  Steam 
462,  1881.  Gauge    Co.    1    McArthur's    Patent 

2  Eagle  Mfg.  Co.   c.  Bradley,  35  Cases,  621,  1859;  Hubel  «.  Dick,  28 
Fed.  Rep.  297,  1888.  Fed.  Rep.  139.  1886. 

3  Loom  Co.  v.  Higgins,  105  U.  S.  4 Kearney  v.  Railroad  Co.  32  Fed. 
594,  1881;  Heath  v.  Hildreth,  1  Me-  Rep.  322,  1887;   National  Machine 
Arthur's    Patent    Cases,    24,    1841;  Co.  «.    Brown,  36  Fed.   Rep.  321, 
Perry  v.  Cornell,  1  McArthur's  Pat-  1888. 


CHAP.   III.]  NOVELTY.  57 

invention  will  date  from  the  completion  of  that  specimen. 
Perfection  is  not  necessary  to  such  a  specimen,  in  order  to 
entitle  it  to  such  an  effect.  Substantial  completeness  is 
enough. 

No  invention  ought  to  date  from  any  day  wherein  it  had 
no  existence  or  representation  outside  of  the  mind  of  the 
inventor,  no  matter  how  clear  or  how  complete  his  mental 
conception  of  its  character  and  mode  of  operation  may  have 
been.  Mental  conceptions  are  not  useful  inventions  until 
they  are  so  embodied  that  the  world  could  use  them  after 
the  death  of  the  persons  who  conceived  them.  To  allow 
inventions  to  take  date  from  mental  conceptions  would 
strongly  tempt  inventors  to  commit  perjury  in  order  to 
appear  to  anticipate  real  anticipations  of  their  patents. 

Whether  an  oral  description,  given  by  the  inventor  to 
another,  of  a  subsequently  patented  invention,  can  give  that 
invention  a  date  earlier  than  that  to  which  it  would  other- 
wise be  entitled,  depends  upon  the  nature  of  the  invention, 
and  the  capacity  of  the  hearer  to  understand  it  and  remem- 
ber it.  Where  an  invention  is  abstruse  or  is  complicated, 
and  where  it  is  not  certain  that  the  hearer  understood  it, 
and  has  remembered  it,  well  enough  to  communicate  it  to 
the  world  in  case  of  the  inventor's  death,  the  invention 
ought  not  to  date  from  such  a  description.1  But  where  it 
is  shown  that  the  person  to  whom  such  an  oral  description 
was  given,  understood  it  completely,  and  has  remembered 
it  accurately,  a  patented  invention  may  date  back  to  that 
oral  description."  The  reason  for  allowing  a  patented  in- 
vention to  date  back  to  an  oral  or  a  written  description,  or 
to  a  drawing  or  a  model,  as  the  case  may  be,  while  an  un- 
patented  invention,  which  is  set  up  to  negative  the  novelty 
of  a  patented  invention,  is  not  allowed  to  date  back  to 
either  of  those  things,  resides  in  the  fact  that  those  things 

'Stephens  v.  Salisbury,  1  Me-  Patent  Cases,  385,  1855;  Hill  e. 

Arthur's  Patent  Cases,  385, 1855.  Dunklee,  1  McArthur's  Patent 

*  Philadelphia  &  Trenton  R.  R.  «.  Cases,  483, 1857;  Davidson  t>.  Lewis, 

Stimpson,  14  Peters,  448,  1840;  1  McArthur's  Patent  Cases,  599, 

Stephens  v.  Salisbury,  1  McArthur's  1858. 


58  NOVELTY.  [CHAP.  in. 

are  incipient  in  their  nature,  and  in  the  principle  that  an 
invention  which  is  ultimately  developed  and  given  to  the 
world  in  a  patent  ought  equitably  to  date  from  such  an  in- 
cipiency,  while  the  rights  of  a  patentee  ought  not  to  be  im- 
paired by  a  similar  incipiency  which  was  never  developed 
into  a  patent. 

§  71.  Novelty  is  negatived  by  prior  knowledge  and  use  in 
this  country,  by  even  a  single  person,  of  the  thing  patented.1 
This  rule  applies  even  to  cases  where  that  knowledge  and 
use  were  purposely  kept  secret ; "  and  it  applies  no  matter 
how  limited  that  use  may  have  been.3 

In  Gayler  v.  Wilder 4  the  Supreme  Court  announced  an 
exception  to  this  rule,  but  in  a  later  case  it  intimated  a  de- 
nial, or  at  least  a  doubt,  of  the  validity  of  that  exception. 
According  to  the  opinion  of  a  majority  of  the  court  in  the 
first  case,  a  single  instance  of  prior  knowledge  and  use  will 
not  negative  novelty  if  that  use  had  ceased  when  the 
patent  was  granted,  and  that  knowledge  was  forgotten  until 
called  to  mind  by  the  reinvention.  Justices  McLEAN  and 
DANIEL  dissented  from  that  conclusion,  and  it  will  probably 
always  be  found  impossible  to  fairly  answer  their  argu- 
ments. 

§  72.  Novelty  is  also  negatived  by  evidence  that  even  one 
specimen  of  the  thing  patented  was  made  in  this  country, 
prior  to  its  invention  by  the  patentee,  even  though  it  was 
not  used  prior  to  that  time.6  This  rule  results  from  the 
statute  which  provides  that  things,  in  order  to  be  patent- 
able,  must  not  have  been  known  or  used  by  others  in  this 
country.7  If  the  prior  article  produced  or  proved  appears 


1  Coffin  v.  Ogden,  18  Wallace,  120,  477,  1850. 

1873;  Brush  v.  Condit,  20  Fed.  Rep.          5  Coffin  v.  Ogdcn,  18  Wallace,  125, 

832,  1884.  1873. 

2  Reed  «.   Cutter,   1   Story,   598,          "Corn-planter  Patent,  23 Wallace, 
1841.  220,   1874;    Parker  v.  Ferguson,  1 

3 Bedford  «.  Hunt,  1  Mason,  301,  Blatch.  408,  1849;  Pitts®.  Wemple, 

1817;  Rich  ».  Lippincott,  2  Fisher,  2  Fisher,  15,  1855;  Stitt  v.  Railroad 

2,  1853.  Co.  22  Fed.  Rep.  650,  1884. 

4  Gayler  v.  Wilder,  10  Howard,          '  Revised  Statutes,  Section  4886. 


CHAP.  III.J  NOVELTY.  59 

on  inspection  to  have  been  identical  with  the  patented 
thing,  and  if  it  is  proved  to  have  been  made  in  this  country 
before  the  date  of  the  patented  invention,  it  follows  that  it 
was  known  here  prior  to  that  time,  and  the  novelty  of  the 
patent  is  necessarily  negatived.  If,  however,  the  identity 
of  the  patented  and  the  prior  article  can  be  known  only  by 
actual  use,  and  if  the  prior  article  never  was  actually  used 
till  after  the  date  of  the  patented  invention,  then  its  prior 
making  will  not  negative  novelty.1  In  that  case,  though  its 
existence  was  known  prior  to  the  invention  of  the  patented 
thing,  it  was  not  known  to  be  what  the  patented  thing  after- 
ward was.  Knowledge  in  order  to  negative  novelty  must 
include  knowledge  of  the  character,  as  well  as  knowledge 
of  the  existence,  of  the  prior  thing. 

§  73.  Negation  of  novelty  is  not  averted  by  the  fact  that 
the  inventor  had  no  knowledge  of  the  anticipating  matter 
when  he  made  the  invention  covered  by  the  patent.3  The 
patent  laws  do  not  reward  people  for  producing  things 
which,  though  new  to  them,  are  old  to  others  in  this  coun- 

try. 

§  74.  Nor  is  negation  of  novelty  averted  by  the  fact  that 
the  anticipating  substance  was  made  by  a  different  process, 
or  derived  from  a  different  source  from  that  which  pro- 
duced the  patented  substance,  for  it  does  not  make  an  old 
thing  new  to  derive  it  from  a  new  and  unexpected  quarter ' 
or  to  make  it  by  a  new  and  improved  method.4 

§  75.  Questions  of  novelty  are  questions  of  fact.6  This 
point  is  very  obvious,  except  in  cases  where  the  prior  thing 
is  a  patent  or  printed  publication.  In  those  cases  it  may 
be  supposed  that  questions  of  novelty  are  questions  of  law 
arising  on  the  construction  of  documents.  The  point  has, 

1  Sayles  v.  Railway  Co.  4  Fisher,  Cummins,    4    Barm.  &  Ard.   490, 

588,  1871;  Stitt  ».  Railroad  Co.  22  1879. 

Fed.  Rep.  650,  1884.  4  Cottle  v.  Krementz,  31  Fed.  Rep. 

8  Many    t>.   Sizer,   1    Fisher,    19,  42,  1887. 

1849.  •  Battin  v.  Taggert,   17  Howard. 

8  Cochrane  v.  Badische  Anilin  &  74,  1854;    Turrill  v.  Railroad  Co.  1 

Soda  Fabrik,  111  U.  S.  811,  1883;  Wallace,  491,  1863. 
Badische  Anilin  &  Soda  Fabrik  v. 


60  .      NOVELTY.  [CHAP.   III. 

however,  been  settled  by  the  Supreme  Court,  in  a  case  in- 
volving the  consideration  of  a  prior  patent,  and  bearing 
with  equal  logical  force  upon  a  prior  printed  publication.1 
In  that  case  it  was  held  that  the  question  whether  the 
novelty  of  a  patent  is  negatived  by  a  prior  patent,  depends 
not  upon  the  construction  of  the  latter,  but  depends  rather 
upon  the  outward  embodiment  of  the  terms  contained  in 
the  latter  document ;  and  that  such  outward  embodiment 
is  to  be  properly  sought,  like  the  explanation  of  latent 
ambiguities  arising  from  the  description  of  external  things, 
by  evidence  in  pais.  The  court  accordingly  indorsed  the 
proposition  that  such  questions  belong  to  the  province  of 
evidence,  and  not  to  that  of  construction ;  and  said  that 
even  where  no  testimony  is  required  to  explain  the  terms 
of  art  or  the  description  contained  in  the  respective  docu- 
ments, the  question  is  still  to  be  treated  as  a  question  of 
fact. 

§  76.  The  burden  of  proof  of  a  want  of  novelty  rests  upon 
him  who  avers  it,  .and  every  reasonable  doubt  should  be 
resolved  against  him.2  It  follows  from  this  declaration  of 
the  Supreme  Court,  and  has  been  expressly  decided  by 
several  Circuit  Courts,  that  novelty  can  only  be  negatived 
by  proof  which  puts  the  fact  beyond  a  reasonable  doubt.3 

1  Bischoff  v.  Withered,  9  Wallace,  3  Wood  v.  Mill  Co.  4  Fisher,  560, 
812,  1869.  1871;  Hawes  v.  Antisdel,  2  Bann.  & 

2  Coffin  v.   Ogden,    18  Wallace,  Ard.  10,  1875;  Bignall  ®.  Harvey,  5 
120,  1873;  Cantrell  v.  Wallick,  117  Bann.  &  Ard.  636,  1880;  Worswick 
U.  S.  696,  1885;  Parham  v.  Machine  Mfg.  Co.  v.  Buffalo,  20  Fed.  Rep. 
Co.   4  Fisher,   482,  1871;  Webster  126,  1884;  Thayer  «.  Hart,  20  Fed. 
Loom  Co.  v.  Higgins,   4  Bann.  &  Rep.  694,  1884;  Everest  «.  Oil  Co. 
Ard.  88,  1879;  Shirley  v.  Sanderson,  20  Fed.  Rep.  849,  1884;  American 
8  Fed.   Rep.   908,    1881;    Green  v.  Bell    Telephone    Co.     v.    People's 
French,    11   Fed.  Rep.    591,    1882;  Telephone  Co.    22  Fed.   Rep.  313, 
Duffy  v.   Reynolds,   24  Fed.    Rep.  1884;    McDonald    v.    Whitney,    24 
858,  1885;  Dreyfus  v.  Schneider,  25  Fed.    Rep.    600,   1885:  Jennings  «. 
Fed.   Rep.    481,   1885;    Osborne  «.  Kibbe,    24    Fed.    Rep.    698,    1885; 
Glazier,   31  Fed.  Rep.    404,    1887;  Wetherell  «.  Keith,  27  Fed.   Rep. 
Smith  v.  Davis,  34  Fed.  Rep.  785,  364,  1886;  Hobbie  v.  Smith,  27  Fed. 
1888;  Howard  v.   Plow  Works,   35  Rep.  659,  1886;  Cohan sey  Mfg.  Co. 
Fed.  Rep.  745,  1888.  «.  Wharton,  28  Fed.  Rep.  191,  1886; 


CHAP.  III.]  NOVELTY.  61 

Under  this  rule,  a  patent  enjoys  the  same  presumption  of 
novelty,  that  an  unconvicted  prisoner  does  of  innocence.1 
Unlike  most  civil  titles,  it  is  not  liable  to  be  overthrown  by 
a  mere  preponderance  of  evidence.  The  reason  for  this 
discrimination,  resides  in  the  fact  that  patentees  are  gene- 
rally strangers  to  the  alleged  transactions  upon  which  want 
of  novelty  is  sought  to  be  based.  In  civil  suits  generally 
the  parties  are  both  cognizant  of  the  matters  in  controversy, 
and  therefore  equally  able  to  guard  against  error  and  per- 
jury in  the  witnesses.  In  patent  cases,  on  the  other  hand, 
the  alleged  facts  relied  upon  by  defendants  to  show  want 
of  novelty,  are  nearly  always  wholly  outside  the  knowledge 
of  the  plaintiffs.  Those  allegations  may  really  be  without 
any  foundation,  and  the  plaintiffs  be  wholly  ignorant  of  that 
fact.  It  is  easy  for  a  few  bad  or  mistaken  men  to  testify, 
that  in  some  remote  or  unfrequented  place,  they  used  or 
knew  a  thing  substantially  like  the  thing  covered  by  the 
patent,  and  did  so  before  that  thing  was  invented  by  the 
patentee.  In  such  a  case  it  may  happen  that  the  plaintiff 
can  produce  nothing  but  negative  testimony  in  reply : 
testimony  of  persons  who  were  conversant  with  the  place 
in  question,  at  the  time  in  question,  and  did  not  see  or 
know  the  thing  alleged  to  have  been  there  at  that  time.  If 
mere  preponderance  of  evidence  were  to  control  the  issue, 
the  affirmative  testimony  of  a  few  persons,  that  they  did 
•see  or  know  or  use  a  particular  thing  at  a  particular  time 
and  place,  would  outweigh  the  negative  testimony  of  many 
persons,  that  they  were  at  or  near  that  place  at  that  time, 
and  did  not  see  or  know  or  use  any  such  thing.  But  such 
negative  testimony  may  cast  a  reasonable  doubt  upon  such 
affirmative  evidence,  and  if  it  is  strong  enough  for  that  pur- 
pose it  will  render  the  latter  unavailing.* 

American  Bell    Telephone    Co.  v.  *  Sayles  «.  Railway  Co.  4  Fisher, 

Globe  Telephone  Co.  31  Fed.  Rep.  588,  1871;  Washburn  &  Moen  Mfg. 

733,  1887.  Co.  v.  Haish,  4  Fed.  Rep.  900,  1880; 

1  Cluett  v.  Clafflin,  30  Fed.  Rep.  Green  t>.  French,  11  Fed.  Rep.  591, 

922,  1887;   Untermeyer  t>.  Freund,  1882. 
37  Fed.  Rep.  343,  1889. 


CHAPTER  IV. 


UTILITY. 


77.  Utility  necessary  to  patentabil- 
ity, 

78.  Utility  is  negatived  by  lack  of 
function. 

79.  Perfection  not  necessary  to  util- 
ity. 

80.  Beauty  has  utility. 

81.  Utility  is  negatived  where  func- 
tion is  evil. 


82.  Functions     which     sometimes 
work  evil,  and  sometimes  work 
good. 

83.  Functions    thought  by  some  to 
be  good,  and  by  others  to  be 
bad. 

84.  Good  functions  in  wrong  places. 

85.  Doubts  relevant  to  utility  to  be 
solved  against  infringers. 


§  77.  THE  useful  arts  are  those  that  Congress  is  author- 
ized by  the  Constitution  to  promote,  and  accordingly  the 
statute  includes  utility  among  the  qualities  which  a  process 
or  a  thing  must  have  in  order  to  be  patentable.1  To  possess 
utility,  a  thing  or  a  process  must  be  capable  of  producing 
a  result,  and  that  result  must  be  a  good  result.  Both 
these  elements  inhere  in  the  meaning  of  the  word  ;  and  they 
are  so  distinct  as  to  require  separate  explanation. 

§  78.  Utility  is  absent  from  all  processes  and  devices 
which  cannot  be  used  to  perform  their  specified  functions, 
and  patents  for  such  subjects  are  therefore  void.2  This 
rule  applies  even  to  cases  in  which,  by  simply  adding  new 
elements  to  useless  contrivances,  highly  useful  inventions 
are  produced. 

In  Burrall  v.  Jewett s  the  patent  covered  the  cylinder  of  a 
threshing-machine,  having  rows  of  teeth  inserted  in  its  con- 
vex surface  and  revolving  within  a  barrel  which  had  no 


1  Revised  Statutes,  Section  4886. 

8  Bliss  v.  Brooklyn,  10  Blatch.522, 

1873;  Rowe  v.  Blanchard,  18  Wis- 


consin, 465,  1864. 

3  Burrall  v.  Jewett,  2  Paige,  143, 
1830. 

62 


CHAP.  IV.]  UTILITY.  63 

teeth.  The  contrivance  was  confessedly  useless.  After  the 
patent  for  it  was  granted,  the  patentee,  or  some  other  per- 
son, by  simply  inserting  rows  of  teeth  in  the  concave  sur- 
face of  the  barrel,  produced  the  successful  threshing- 
machine,  which  has  everywhere  superseded  the  ancient 
flail.  The  law  applicable  to  these  facts  was  stated  by 
Chancellor  WALWORTH  in  the  following  terms  :  "  The  patent 
is  void  if  the  machine  will  not  answer  the  purpose  for  which 
it  was  intended,  without  some  addition,  adjustment,  or  al- 
teration, which  the  mechanic  who  is  to  construct  it  must 
introduce  of  his  own  invention,  and  which  had  not  been  in- 
vented or  discovered  by  the  patentee  at  the  time  his  patent 
was  issued." 

In  Bliss  v.  Brooklyn  the  patent  covered  a  certain  hose- 
coupling.  The  contrivance  was  worthless,  because  it  proved 
on  trial  to  be  inoperative.  The  subsequent  addition  of  a 
lug  to  one  of  its  parts,  transformed  the  coupling  into  a  use- 
ful invention.  Judge  BENEDICT  nevertheless  held  the  patent 
to  be  invalid  for  want  of  utility. 

§  79.  If,  however,  a  device  performs  a  good  function, 
though  but  imperfectly,  the  utility  of  that  device  is  not 
negatived  by  the  fact  that  it  is  susceptible  of  improvement, 
which  will  make  it  operate  much  better,1  nor  by  the  fact 
that  some  prior  invention  performed  the  same  funttion 
quite  as  well,1  or  even  performed  it  with  superior  excel- 
lence.3 Nor  is  utility  negatived  by  later  inventions  which 
are  so  much  superior  to  the  patented  process  or  thing,  that 
they  entirely  superseded  the  use  of  the  latter.4  Indeed, 
patents  are  never  held  to  be  void  for  want  of  utility,  merely 
because  the  things  covered  by  them  perform  their  functions 
but  poorly/  In  such  cases  no  harm  results  to  the  public 


1  Wheeler  v.  Reaper  Co.  lOBlatch.  4  Railway  Co.  v.  Sayles,  97  U.  S. 

189,1872.  559,  1878;   Poppenlmsen   v.   Comb 

*  Seymour  fl.Osborne,  11  Wallace,  Co.  2  Fisher,  72,  1858;  McComb  v. 

516,   1870;    Sbaw    v.  Lead  Co.    11  Ernest,  1  Woods,  203,  1871. 

Fed.  Rep.  715, 1882.  6  Vnuce   v.   Campbell,  1  Fisher, 

"Bell  v.  Daniels,  1  Fisher,  875,  485,    1859;    Conover   «.   Roach,   4 

1858.  Fisher,  16,  1857. 


64  UTILITY.  [CHAP.  iv. 

from  the  exclusive  right,  because  few  will  use  the  invention, 
and  because  those  who  do  use  it  without  permission,  will 
seldom  or  never  be  obliged  to  pay  for  that  use,  anything 
beyond  the  small  benefit  they  may  really  have  realized 
therefrom.' 

§  80.  Utility  is  not  negatived  by  the  fact  that  the  manu- 
facture covered  by  the  patent  has  no  function  except  to 
decorate  the  object  to  which  it  is  designed  to  be  attached.2 
In  such  cases  utility  resides  in  beauty.  Whatever  is  beau- 
tiful is  useful,  because  beauty  gives  pleasure,  and  pleasure 
is  a  kind  of  happiness,  and  happiness  is  the  ultimate  object 
of  the  use  of  all  things. 

§  81.  Utility  is  negatived  if  the  function  performed  by  an 
invention  is  injurious  to  the  morals,  the  health,  or  the  good 
order  of  society.3  An  invention  to  improve  the  art  of 
forgery,  or  one  to  facilitate  the  spread  of  a  contagious  dis- 
ease, or  one  to  render  air  or  water  intoxicating,  would  of 
course  be  unpatentable  for  Want  of  utility.  The  more  com- 
pletely such  an  invention  could  perform  its  function,  the 
more  objectionable  it  would  be  in  this  respect.  But  utility 
is  not  negatived  by  the  fact  that  the  article  covered  by  a 
patent  is  an  imitation  of  a  natural  substance/ 

§  82.  An  important  question  relevant  to  utility  in  this  as- 
pect* may  hereafter  arise  and  call  for  judicial  decision.  It 
is  perhaps  true,  for  example,  that  the  invention  of  Colt's 
revolver  was  injurious  to  the  morals,  and  injurious  to  the 
health,  and  injurious  to  the  good  order  of  society.  That 
instrument  of  death  may  have  been  injurious  to  morals,  in 
tending  to  tempt  and  to  promote  the  gratification  of  private 
revenge.  It  may  have  been  injurious  to  health,  in  that  it  is 
very  liable  to  accidental  discharge,  and  to  thereby  cause 
wounds,  and  even  homicide.  It  may  also  have  been  in- 
jurious to  good  order,  especially  in  the  newer  parts  of  the 
country,  because  it  facilitates  and  increases  private  war- 

1  Gibbs  v.  Hoefner,  19  Fed.  Rep.  *  Bedford  v.  Hunt,  1  Mason,  301, 

324,  1881.  1817. 

4  Magic  Ruffle  Co.  v.  Douglas,  2  4  In  re  Corbin  and  Martlett,  1  Mc- 

Fisher,  330,  1863.  Arthur's  Patent  Cases,  521,  1857. 


CHAP.  IV.  J  UTILITY.  65 

fare  among  frontiersmen.  On  the  other  hand,  the  revolver, 
by  furnishing  a  ready  means  of  self-defence,  may  sometimes 
have  promoted  morals  and  health  and  good  order.  By  what 
test,  therefore,  is  utility  to  be  determined  in  such  cases  ? 
Is  it  to  be  done  by  balancing  the  good  functions  with  the 
evil  functions  ?  Or  is  everything  useful  within  the  meaning 
of  the  law  if  it  can  be  used  to  accomplish  a  good  result, 
though  in  fact  it  is  oftener  used  to  accomplish  a  bad  one  ? 
Or  is  utility  negatived  by  the  mere  fact  that  the  thing  in 
question  is  sometimes  injurious  to  morals,  or  to  health,  or  to 
good  order  ?  The  third  hypothesis  cannot  stand,  because 
if  it  could  it  would  be  fatal  to  patents  for  steam-engines, 
telegraphs,  electric  lights,  and  indeed  many  of  the  noblest 
inventions  of  the  nineteenth  century.  The  first  hypothesis 
cannot  stand,  because  if  it  could  it  would  make  the  validity 
of  the  patents  to  depend  on  a  question  of  fact,  to  which  it 
would  often  be  impossible  to  give  a  reliable  answer.  The 
second  hypothesis  is  the  only  one  which  is  consistent  with 
the  reason  of  the  case,  and  with  the  practical  construction 
which  the  courts  have  given  to  the  statutory  requirement  of 
utility. 

§  83.  Another  question  relevant  to  utility  of  function  will 
sooner  or  later  demand  the  attention  of  counsel  and  of 
courts.  A  particular  invention  may  invariably  perform  one 
specific  function,  which  function  is  deemed  good  in  some 
quarters,  and  in  other  quarters  is  thought  to  be  bad.  The 
function  performed  by  a  newly  invented  smoking-pipe,  if  it 
increased  the  prevalence  of  smoking,  would  be  thought  by 
many  persons  to  be  only  evil,  and  that  continually  :  would 
be  deemed  by  many  moralists  to  be  injurious  to  the  morals, 
and  by  many  physicians  to  be  injurious  to  the  health  of 
society.  James  I.  would  doubtless  have  refused  a  patent 
for  such  an  invention,  unless  by  granting  one  he  could  have 
diminished  its  use.  On  the  other  hand,  there  are  many 
persons  who  would  regard  such  an  invention  as  truly  use- 
ful. Federal  judges  would  be  found  among  both  parties, 
and  an  entire  difference  of  personal  opinion  on  the  point 
might  perhaps  exist  among  the  justices  of  the  Supreme 


66  UTILITY.  [CHAP.  iv. 

Court  themselves.  Personal  opinion  cannot,  therefore,  con- 
trol the  decision  of  such  a  question,  for  if  it  could  there 
would  be  no  stability  to  the  jurisprudence  of  the  subject. 
Nor  ought  former  custom  to  be  the  criterion,  for  if  it  were 
each  age  would  be  hampered  by  a  prior  and  lower  civiliza- 
tion. Science  may  hereafter  demonstrate  the  uniform  hurt- 
fulness  of  smoking,  and  when  it  does  the  courts  can  hardly 
adjudge  it  to  be  useful  on  the  ground  that  millions  of  men 
formerly  smoked.  It  seems,  therefore,  that  in  such  cases 
of  divided  personal  opinion  relevant  to  the  utility  of  a  par- 
ticular result,  the  only  criterion  of  decision  is  the  average 
public  sentiment  of  the  time  when  the  question  arises. 
Accordingly,  the  courts  at  present  uphold  patents  which 
relate  to  tobacco,  and  will  probably  always  sustain  the 
utility  of  inventions  which  perform  functions  that  average 
public  sentiment  is  willing  to  have  performed. 

§  84  Utility  is  negatived  by  the  fact  that  the  patented 
process  or  thing  is  injurious  to  the  thing  to  which  it  is  ap- 
plicable,1 and  also  by  the  fact  that  the  function  performed 
by  the  patented  part  of  a  machine,  though  good  in  itself,  is 
injurious  to  the  utility  of  the  machine  as  a  whole.2  The 
first  of  these  points  is  well  illustrated  by  the  first  case 
cited  in  this  section :  a  case  based  on  a  patent  for  a  pro- 
cess of  treating  leather  to  an  application  of  fat  liquor.  The 
second  point  is  equally  well  illustrated  by  the  second  case  : 
a  case  based  on  a  patent  for  a  locomotive  spark  arrester. 
To  arrest  sparks  is  in  itself  a  good  thing  to  do,  but  where 
it  must  be  done  in  such  a  way  as  to  stop  or  seriously  re- 
tard the  locomotive,  it  is  not  desirable  to  attempt  it.  There- 
fore a  device  which  would  arrest  sparks,  but  only  at  the 
expense  of  retarding  the  locomotive  from  the  smoke-pipe 
of  which  they  issued,  was  rightly  held  to  be  wanting  in 
utility. 

§  85.  A  patent  is  prima  facie  evidence  of  utility,'  and 


1  Klein    v.   Russell,   19  Wallace,      ley's  Federal  Digest,  618,  1849. 
433,  1873.  3  Vance   v.   Campbell,   1   Fisher, 

*  Wilton  v.  Railroad  Co.  1  Bright-      483,  1859. 


CHAP.  IV.]  UTILITY.  67 

doubts  relevant  to  the  question  should  be  resolved  against 
infringers,1  because  it  is  improbable  that  men  will  render 
themselves  liable  to  actions  for  infringement,  unless  in- 
fringement is  useful.2 

1  Whitney  t>.  Mowry,   4  Fisher,      S.  94,  1881;    La  Rue   v.    Electric 
215,  1870.  Co.  31  Fed.  Rep.  82,  1887. 

s  Lehnbeuter  v.  Holthaus,  105  U. 


CHAPTEE  V. 


ABANDONMENT. 


86.  The  several  sorts  of   abandon- 
ment. 

87.  Abandonment  of  inventions. 

88.  Actual  abandonment  of  inven- 
tions. 

89.  Actual  abandonment  by  express 
declaration. 

90.  Actual  abandonment  by  formal 
disclaimer. 

91.  Actual  abandonment  resulting 
from  laches  before  application. 

92.  Actual  abandonment  resulting 
front  laches    after  application 
and  before  issue  of  letters  pat- 
ent. 

93.  Constructive  abandonment  be- 
fore application. 

94.  "Public  use,"  defined  and  de- 
lineated. 

95.  Experimental  use. 

96.  "On  sale,"  delineated  and  de- 
fined. 

97.  Sale  of  inchoate  right  to  a  pat- 
ent. 


98.  Degree  of  identity  necessarily 
involved  between  the  thing  con- 
structively abandoned  and  the 
thing  patented. 

99.  Making,  works  no  constructive 
abandonment. 

100.  Public  knowledge    works  no 
constructive  abandonment. 

101.  Public  use  or  sale  in  a  foreign 
country. 

103.  Constructive  abandonment  af- 
ter application,  and  before  issue 
of  letters  patent. 

104.  Rules  of  constructive  abandon- 
ment are  inflexible. 

105.  Surrender  of  letters  patent. 

106.  Abandonment  of  invention  af- 
ter letters  patent,  unknown  to 
the  law. 

107.  Acquiescence  in  unlicensed  use 
of  patented  invention. 

108.  Questions  of  abandonment  are 
questions  of  fact. 


§  86.  AN  inventor  may  abandon  an  unsuccessful  en- 
deavor to  make  an  invention  ;  or  having  made  an  invention, 
lie  may  abandon  it  to  the  public  ;  or  having  made  an  inven- 
tion and  having  applied  for  a  patent  thereon,  he  may 
abandon  that  application  without  abandoning  that  inven- 
tion. Transactions  of  the  first  sort  are  commonly  called 
unsuccessful  abandoned  experiments.  They  confer  no 
rights  upon  those  who  make  them,  and  they  affect  no  rights 

68 


CHAP.  V.]  ABANDONMENT.  G9 

of  any  other  person.'  Transactions  of  the  third  sort  are 
treated  in  the  chapter  on  applications :  the  sixth  chapter  of 
this  book.  Transactions  of  the  second  sort  require  treat- 
ment in  respect  that  they  are  inventions;  and  also  require  sep- 
arate treatment  in  respect  that  they  are  abandoned.  Treat- 
ment of  the  first  sort  takes  no  account  of  the  fact  of  abandon- 
ment, because  abandoned  inventions  have  the  same  effect  on 
the  rights  of  subsequent  inventors  that  they  would  have  if 
they  had  not  been  abandoned.  That  subject,  therefore,  does 
not  belong  to  this  chapter.  It  is  treated  in  the  chapters  on 
invention  and  letters  patent,  where  the  state  of  the  art  is  a 
very  important  factor  in  the  discussion ;  and  also  in  the 
chapter  on  novelty,  where  anticipation  is  the  point  of  in- 
quiry. Treatment  of  the  second  sort  indicated  above  is  the 
special  function  and  scope  of  this  chapter.  Abandoned  in- 
ventions are  here  considered  with  regard  to  the  effect 
abandonment  of  them  has  upon  the  rights  of  their  invent- 
ors, and  with  regard  to  the  rules  by  means  of  which  aban- 
donment is  to  be  affirmed  or  denied  in  particular  cases. 

§  87.  Abandonment  of  an  invention  may  be  actual,  or  it 
may  be  constructive.  It  is  actual  when  it  is  the  result  of 
intention.  It  is  constructive  when  it  is  the  result  of  some 
statute  which  operates  regardless  of  the  intention  of  the 
inventor.  The  two  sorts  require  and  will  receive  sepa- 
rate treatment  in  this  chapter,  but  there  are  some  points  of 
fact  and  of  law  which  apply  equally  to  both.  Either  kind 
may  occur  before  any  application  for  a  patent  is  made,  or 
may  occur  after  such  an  application,  and  before  any  letters 
patent  are  issued."  So  also,  either  actual  or  constructive 
abandonment  of  an  invention,  is  fatal  to  the  validity  of  any 
patent  that  may  afterward  be  granted  therefor.  The  in- 
choate right  to  a  patent  when  once  abandoned  can,  never  be 
resumed,  for  where  gifts  are  once  made  to  the  public,,  they 
become  absolute  and  irrevocable.1 

1  American    Bell  Telephone  Co.  Co.  118  U.  S.  24.  1885. 

v.  Cushman  Telephone  Co.  35  Fed.  3  Pennock  v.  Dialogue,  2  Peters, 

Rep.  734,  1888.  1, 1829;  Kendall  «.  Winsor,  21  How- 

s  Rifle  &  Cartridge  Co.  t.  Arms  ard,  328,  1858 ;  Consolidated.  Fruit 


TO  ABANDONMENT.  [CHAP.  V. 

§  88.  Actual  abandonment  of  an  invention  occurs  when- 
ever there  is  an  entire  relinquishment  of  all  expectation  of 
securing  a  patent  therefor,  and  an  accompanying  formation 
of  an  expectation  that  the  invention  will  always  be  free  to  the 
public.'  Such  a  relinquishment  may  be  shown  by  direct, 
or  by  circumstantial  evidence.  It  may  be  proved  by  things 
said  or  things  done  by  the  inventor,  or  it  may  be  proved  by 
his  omission  or  delay  to  do  what  the  law  requires  to  be 
done  in  order  to  secure  letters  patent. 

§  89.  An  inventor  abandons  his  invention  to  the  public 
when  he  makes  an  express  declaration  to  that  effect.8 

In  the  case  of  Pitts  v.  Hall,"  Justice  NELSON  charged  the 
jury  to  the  contrary  of  this  rule,  but  it  is  believed  that  he 
never  was  followed  in  this  respect  by  any  other  Federal 
judge.  Subsequently  Justice  CURTIS  charged  the  jury,  in 
Kendall  v.  Winsor,  that  abandonment  might  be  shown  by 
declarations  or  conduct,  and  the  Supreme  Court  held  that 
Justice  CURTIS'S  instruction  was  in  strict  conformity  with 
the  true  principle.  The  Supreme  Court  also  said  in  that 
case  :  "  It  is  the  unquestionable  right  of  every  inventor,  to 
confer  gratuitously  the  benefits  of  his  ingenuity  upon  the 
public,  and  this  he  may  do  by  express  declaration." 

§  90.  So  also  an  inventor  will  no  doubt  be  held  to  aban- 
don a  particular  invention,  when  he  formally  disclaims  it  in 
an  application  for  a  patent  for  some  other  invention  ;4  and 
by  sameness  of  reasoning,  when  he  formally  disclaims  it  in 
a  separate  paper  filed  for  that  purpose.  The  Supreme 
Court  decided  in  1854,  that  no  abandonment  results  from 
the  mere  fact  that  the  inventor  described  the  invention  in 
an  application  for  a  patent,  without  either  claiming  or  dis- 
claiming the  same.6  When  the  cited  case  was  tried  in  the 

Jar  Co.  v.  Wright,  94  U.  S.  96,  1876;  Co.   «.  Arms    Co.   118    U.   S.   24, 

Planing  Machine  Co.  v.  Keith,  101  1885. 

U.  S.  484,  1879 ;  Consolidated  Fruit  8  Pitts    0.   Hall,  2   Blatch.   237, 

Jar  Co.  c.  Stamping    Co.  27  Fed.  1851. 

Rep.  377,  1886.  4  Leggett «.  Avery,  101  TJ.  S.  259, 

1  Babcock  v.  Degener,  1  McAr-  1879. 

thur's  Patent  Cases,  616,  1859.  6  Battin  v.  Taggert,  17  Howard, 

2  Kendall    «.   Winsor,   21   How-      83,  1854. 
ard,  328,  1858;  Rifle  &  Cartridge 


CHAP.  V.]  ABANDONMENT.  71 

court  below,  the  judge  charged  the  jury  "  That  a  descrip- 
tion, by  the  applicant  for  a  patent,  of  a  machine,  or  a 
part  of  a  machine,  in  his  specification,  unaccompanied  by  a 
notice  that  he  has  rights  in  it  as  an  inventor,  or  that  he 
desires  to  secure  title  to  it  as  a  patentee,  is  a  dedication  of 
it  to  the  public."  But  when  the  case  reached  the  Supreme 
Court,  that  instruction  was  decided  to  be  erroneous,  and  a 
new  trial  was  therefore  awarded.  The  paramount  prece- 
dent thus  established  has,  however,  been  overlooked  in 
many  recent  cases,  beginning  with  Miller  v.  Brass  Co.,  in 
1882.'  In  that  case,  Justice  BRADLEY  wrote  the  following 
obiter  dictum  :  "  But  it  must  be  remembered  that  the  claim 
of  a  specific  device  or  combination,  and  an  omission  to 
claim  other  devices  or  combinations  apparent  on  the  face  of 
the  patent,  are  in  law  a  dedication  to  the  public  of  that  which 
is  not  claimed."  That  obiter  dictum  was  contrary  to  what 
the  Supreme  Court  decided  in  the  case  of  Battin  v.  Tag- 
gert,  and  like  the  obiter  dictum  of  the  same  Justice  in  the 
case  of  Carr  v.  The  United  States,2  which  was  afterwards 
mentioned  and  overruled  by  the  Supreme  Court  in  the  case 
of  the  United  States  v.  Lee,3  it  has  no  force  as  law.  The 
rule  in  Battin  v.  Taggert  therefore  remains  unreversed,  and 
has  been  enforced  in  several  cases  in  the  Circuit  Courts, 
even  since  Miller  v.  Brass  Co.  was  published.4 

§  91.  Abandonment  is  also  proved  by  evidence  that  the 
inventor  is  chargeable  with  laches,  relevant  to  applying  for 
a  patent,5  or  relevant  to  prosecuting  or  renewing  his  appli- 
cation after  it  has  been  rejected  or  withdrawn."  Long 
delay  constitutes  laches,  unless  there  was  some  reason 
which  rendered  that  delay  consistent  with  an  expectation  to 

1  Miller  v.  Brass  Co.    104  U.   S.  Rep.  424.  1884. 

352,  1881.  '  Consolidated  Fruit  Jar  Co.   v. 

*  Carr  v.  United  States,  98  U.  S.  Wright,  94  U.  S.  96,  1876 ;  Craver 

•433,  1878.  v.   Weyhrich.   81    Fed.    Rep.   607, 

3  United  States  v.  Lee,  106  U.  S.  1887. 

217,  1882.  '  Planing  Machine  Co.  «.  Keith, 

'Vermont  Farm  Machine  Co.  v.  101  U.  S.  484,  1879;  Rifle  &  Cart- 
Marble,  19  Fed.  Rep.  307,  1884 ;  ridge  Co.  v.  Arms  Co.  118  U.  S.  22, 
Cahn  t.  Wong  Town  On,  19  Fed.  1885. 


72  ABANDONMENT.  [CHAP.  V. 

finally  secure  a  patent.  Extreme  poverty  of  the  inventor  is 
such  a  reason  ; '  but  poverty  which  was  not  sufficient  to 
prevent  the  inventor  from  securing  patents  on  other  inven- 
tions,1 or  from  spending  money  for  an  education,3  is  not 
such  a  reason.  The  fact  that  during  all,  or  during  much  of 
the  delay  the  inventor  was  within  the  so-called  Southern 
Confederacy,  and  therefore  unable  to  apply  for  a  United 
States  patent,  has  also  been  repeatedly  held  to  be  such  a 
reason.4  Mental  disorder  which  was  great  enough  to  gen- 
erally incapacitate  the  inventor  for  business  during  the 
time  of  the  delay,  is  also  such  a  fact  as  will  negative  laches,5 
and  physical  disorder  ought  under  the  same  circumstances 
to  have  the  same  effect. 

Neither  can  laches  be  predicated  of  any  delay  which  was 
caused  by  the  experiments  of  the  inventor  in  making  or  per- 
fecting his  invention,8  nor  of  any  delay  caused  by  absorbing 
misfortune,7  nor  upon  any  neglect  of  which  his  patent  so- 
licitor was  guilty,8  nor  upon  any  delay  of  action  on  the 
part  of  public  officers  or  courts.9  Nor  does  delay  con- 
stitute laches,  when  it  was  caused  by  the  fact  that  the  in- 
vention could  only  be  used  in  connection  with  one  covered 
by  another  patent,  and  by  the  fact  that  the  inventor  failed 
to  make  any  arrangement  with  the  owner  of  that  patent  for 
the  joint  use  of  the  two  inventions.10  If,  under  such  circum- 
stances, the  inventor  waits  till  the  older  patent  expires  be- 
fore securing  his  patent,  his  delay  is  amply  accounted  for 

1  Smith  v.  Dental  Vulcanite  Co.  Rep.  784,  1882. 

93  U.  S.  491,  1876;  Celluloid  Mfg.  6  Agawam  Co.  v.  Jordan,  7  Wai- 
Co.  t>.   Crofut,  24    Fed.  Rep.  796,  lace,  583,  1868. 
1885.  7  Beedle    v.  Bennett,   122  U.  S. 

'-'  Rifle  &  Cartridge  Co.  v.  Arms  76,  1886. 

Co.  118  U.  S.  24,  1885;    Wickers-  8  Birdsall  v.  McDonald,  1  Bann. 

liaui  v.  Singer,  1  McArthur's  Patent  &  Ard.  165,    1874  ;    Howes  «.  Mc- 

Cases,  689,  1859.  Neal,  3  Bann.  &  Ard.  376,  1878. 

3  Craver  v.    Weyhrich,   31   Fed.  9  Adams  v.  Jones,  1  Fisher,  530, 
Rep.  607,  1887.  1859 ;    Sayles    v.     Railroad    Co.   2 

4  Johnsen  v.  Fassman,  1  Woods,  Fisher,  523,  1865. 

142,  1871 ;  Kuox  v.  Loweree,  1  I0  Webster  v.  New  Brunswick 
Bann.  &  Ard.  589,  1874.  Carpet  Co.  1  Bann.  &  Ard.  84, 

5  Ballard  v.   Pittsburg,    12  Fed.      1874. 


CHAP.  V.]  ABANDONMENT.  73 

by  his  desire  to  enjoy,  for  the  full  statutory  term  of  a 
patent,  the  practical  exclusive  right  to  his  invention.  To 
predicate  abandonment  of  delay  suffered  for  such  a  pur- 
pose would  be  logically  impossible. 

§  92.  Where  an  application  for  a  patent  is  rejected  when 
it  ought  to  be  allowed,  and  where  the  inventor  long 
acquiesces  in  that  erroneous  rejection,  supposing  it  to  be 
right,  he  cannot,  on  receiving  better  information,  renew  his 
application  or  file  another,  and  thereupon  secure  a  valid 
patent.1  In  such  a  case  the  desire  of  the  inventor  to  secure 
a  patent  may  never  have  left  him,  but  there  was  doubtless 
a  complete,  though  perhaps  reluctant,  relinquishment  of  all 
expectation  of  so  doing.  An  abandonment  of  an  invention 
is  not  less  real  because  it  was  unnecessary.  But  Congress, 
by  a  special  act,  may  waive  an  abandonment  and  authorize 
a  patent  to  issue  for  the  abandoned  invention.11 

§  93.  Constructive  abandonment  of  inventions  prior  to 
applications  for  letters  patent,  is  the  offspring  of  certain 
statutes,  the  earliest  of  which  was  the  Patent  Act  of  1836.3 
Sections  6  and  7  of  that  Act  authorized  the  Commissioner 
of  Patents  to  grant  a  patent  only  where  the  alleged  inven- 
tion had  not  been  in  public  use  or  on  sale  with  the  appli- 
cant's consent  or  allowance,  prior  to  the  application.  Sec- 
tion 15  provided  that  in  suits  for  infringement,  judgment 
should  be  rendered  for  the  defendant,  if  he  should  have 
pleaded  and  proved  that  the  thing  patented  had  been  in 
public  use  or  on  sale,  with  the  consent  or  allowance  of  the 
patentee,  before  his  application  for  a  patent.  Section  7  of 
the  Patent  Act  of  1839 4  provided  that  no  patent  should  be 
held  to  be  invalid  by  reason  of  purchase,  sale,  or  use  of  the 
thing  covered  thereby,  prior  to  the  application  for  a  patent, 
except  on  proof  of  abandonment  of  such  invention  to  the 
public,  or  on  proof  that  such  purchase,  sale,  or  use  had 

'  Marsh  v.  Commissioner,  3  Bis-  Rep.  42,  1884. 

sell,  321,  1872 ;  Consolidated  Fruit  a  5  Statutes  at  Large,  Ch.  357,  p. 

Jar  Co.  v.  Stamping  Co.   27  Fed.  117. 

Rep.  377,  1886.  4  5  Statutes  at  Large,  Ch.  80,  p. 

*  Graham  v.   Johnslon,   21  Fed.  354. 


74  ABANDONMENT.  [CHAP.  V. 

been  for  more  than  two  years  prior  to  such  application  for 
a  patent.  This  provision  of  the  Act  of  1839  was,  in  one 
respect,  restrictive  of  the  enactments  just  cited  from  the 
statute  of  1836 ;  and  in  one  respect  it  enlarged  their  opera- 
tion. Its  effect  was  to  amend  those  enactments  in  the  same 
way  that  it  would  have  done,  if  it  had  inserted  the  words 
"  for  more  than  two  years  "  in  the  proper  place  in  their 
phraseology,  and  had  also  cancelled  the  qualification 
which  related  to  consent  and  allowance.1  This  phrase 
"  for  more  than  two  years  "  means  earlier  than  two  years,2 
so  that  the  law  which  the  two  statutes  established  on  the 
subject  is  expressed  in  the  following  sentence.  A  patent  is 
void  if  the  invention  covered  thereby  was  in  public  use  or 
on  sale  earlier  than  two  years  before  the  application  for 
that  patent.  And  that  continued  to  be  the  law  of  the 
United  States  on  the  subject  under  the  Consolidated  Patent 
Act  of  July  8,  1870, 3  and  also  under  the  Revised  Statutes.4 
The  two  years  contemplated  by  this  law  are  ascertained  by 
measuring  backward  from  the  date  of  the  filing  of  the  ap- 
plication in  the  Patent  Office  ;5  but  where  a  second  or  re- 
newed application  is  filed  to  take  the  place  of  another  which 
described  and  claimed  the  same  invention,  and  which  was 
withdrawn  or  relinquished  with  intent  to  file  the  second 
application,  the  two  years  are  ascertained  by  measuring 
backward  from  the  date  of  the  filing  of  the  first  applica- 
tion.' 

§  94.  What  is  "  public  use,"  within  the  meaning  of  the 
statute  ?  This  question  has  now  received  light  from  a  suf- 
ficient number  of  decisions,  affirming  or  negativing  the  fact 
of  public  use  in  particular  cases,  to  make  it  possible  to  de- 
duce a  moderately  precise  answer  from  judicial  authorities. 

If  the  inventor  allows  his  invention  to  be  used  by  other 

1  Andrews  ».  Hovey,  123  U.   S.          4  Revised  Statutes,  Section  4886. 
267,  1887 ;  124  U.  S.  694,  1887.  s  Campbell  «.  New  York,  35  Fed. 

2  Consolidated   Fruit  Jar  Co.  v.      Rep.  504,  1888. 

Wright,  94  U.  S.  94,  1876.  6  International  Crown  Co.  v.  Rich- 

3  16  Statutes  at  Large,  Ch.  230,  p.       mond,  30  Fed.  Rep.  778,  1887. 
198. 


CHAP.  V.]  ABANDONMENT.  75 

persons  generally,  either  with  or  without  compensation, 
then  it  will  be  in  public  use  within  the  meaning  of  the  stat- 
ute.1 

If  the  inventor  uses  his  invention  for  profit,  and  not  by 
way  of  experiment,  that  is  a  public  use,4  unless  actual  use 
resulting  in  profit  is  necessary  to  show  the  inventor  how  to 
perfect  his  invention,  and  unless  he  does  perfect  it  in  ac- 
cordance with  the  teachings  of  such  use.3  Nor  will  the  fact 
that  the  inventor  is  but  an  employe  in  the  place  where  he 
uses  his  invention,  or  the  fact  that  the  profit  goes  primarily 
to  his  employer,  oust  the  operation  of  this  rule.4 

To  constitute  public  use,  it  is  not  necessary  that  more 
than  one  specimen  of  the  thing  invented  should  have  been 
publicly  used,5  nor  that  more  than  one  person  should  have 
known  of  that  use.8  Nor  is  it  necessary  to  public  use  that 
the  article  used  could  have  been  seen  by  the  public  eye,  if 
the  ordinary  use  of  such  articles  is  veiled  from  view.7 

§  95.  Experimental  use  is  never  public  use  within  the 
meaning  of  the  statute,  if  it  is  conducted  in  good  faith  for 
the  purpose  of  testing  the  qualities  of  the  invention,  and  for 
no  other  purpose  not  naturally  incidental  to  that.*  In  such 
a  case  it  is  immaterial  whether  the  experimental  use  dis- 
closed a  necessity  for  improvement,  or  disclosed  no  such 
necessity  ;  and  is  also  immaterial  whether  the  use  was  con- 
ducted with  secrecy  or  not.  It  may  indeed  have  been  had 
in  the  open  air,  and  have  continued  every  day  for  several 
years,  and  have  been  known  to  hundreds  of  persons,  and 
have  incidentally  inured  to  the  profit  of  the  user  and  of  the 
public,  and  still  not  be  a  public  use,  within  the  meaning  of 
the  statute,  if  the  nature  of  the  invention  was  such  that  only 

1  Elizabeth  v.  Pavement  Co.  97  Wright,  94  U.  S.  94,  1876  ;  Jones 

U.  S.  135,  1877.  v.  Barker,  11  Fed.  Rep.  597,  1882. 

*  Elizabeth  t>.  Pavement  Co.  97  •  Egbert  v.  Lippmann,  104  U.  8. 

U.  S.  137,  1877.  336,  1881. 

8  Sprague  v.  Mfg.  Co.  12  Fed.  1  Egbert  v.  Lippmann,  104  U.  S. 

Rep  724,  1882.  836,  1881. 

4  Worley  v.  Tobacco  Co.  104  U.  •  Beedle  c.  Bennett,  122  U.  S.  77, 

S.  340,  1881.  1886. 

8  Consolidated  Fruit  Jar  Co.    v. 


76  ABANDONMENT.  [CHAP.  V. 

long-continued  out-door  use  could  show  whether  the  inven- 
tion possessed  utility,  or  show  in  what  respects,  if  any,  it 
required  to  be  improved.1  The  liberal  ideas  which  under- 
lie the  decision  just  cited  will  doubtless  be  applied  to  every 
variety  of  invention,  as  occasion  serves,  and  will  be  found 
elastic  enough  to  cover  every  meritorious  case.  Indeed, 
Judge  LOWELL  has  gone  still  further  in  the  direction  of  lib- 
erally allowing  scope  to  experimental  use,  and  has  decided 
that  such  use  is  not  public  use  within  the  meaning  of  the 
law,  where,  in  order  to  test  its  comparative  as  well  as  its  ab- 
solute utility,  and  in  order  to  convince  others  of  its  merits, 
an  inventor  allows  them  to  use  his  invention  after  he  has 
himself  become  satisfied  that  it  is  useful.3  But  where  the 
main  object  of  the  use  was  profit,  and  improvement  was 
only  an  incidental  aim,  the  use  is  not  experimental  in  the 
eye  of  the  law ; 3  and  proof  of  the  experimental  character  of 
any  use  which  occurred  earlier  than  two  years  before  the 
application  for  a  patent,  must  be  full,  unequivocal,  and  con- 
vincing, or  it  cannot  prevail  to  save  that  patent  from  inva- 
lidity.4 

§  96.  What  is  being  "on  sale,"  within  the  meaning  of  the 
statute  ?  The  answer  to  this  question  also,  can  now  be  ac- 
curately delineated  in  nearly  or  quite  all  of  its  boundaries. 

A  single  instance  of  sale  of  one  specimen  of  the  thing  in- 
vented is  enough  to  constitute  putting  the  invention  on 
sale,6  and  indeed  a  device  will  be  on  sale  within  the  mean- 
ing of  the  law,  if  it  is  oftered  for  sale,  whether  any  specimen 
of  it  is  actually  sold  or  not.8  If,  however,  the  nature  of  the 
invention  is  such  that  the  inventor  is  obliged  to  put  it  into 
the  hands  of  others  for  crucial  experiment,  he  may  sell 
specimens  to  those  others  for  that  purpose,  and  such  a  sale 


1  Elizabeth  v.  Pavement  Co.   97  *  Smith   &  Griggs  Mfg.    Co.   v, 
U.  S.  134,  1877.  Sprague,  123  U.  S.  254,  1887. 

2  Sinclair  v.   Backus,   5  Bann.  &  B  Consolidated    Fruit  Jar   Co.   v. 
Ard.  81,  1880.  Wright,  94  U.  S.  94,  1876. 

3  Smith  &   Griggs    Mfg.    Co.   v.  *  Plimpton  v.  Winslow,    14  Fed 
Sprague,  123  U.  S.  256,  1887.  Rep.  921,  1883. 


CHAP.  V.]  ABANDONMENT.  77 

will  not  be  obnoxious  to  the  law  now  under  consideration.1 
But  if  the  invention  could  have  been  tested  by  the  inventor 
on  his  own  premises,  as  well  as  by  any  one  there  or  else- 
where, then  either  an  absolute  or  a  conditional  sale  of  a 
specimen  of  the  thing  invented,  will  be  putting  the  inven- 
tion on  sale,  unless  there  is  unequivocal  evidence  that  the 
sale  was  made  for  the  purpose  of  experimental  use.*  And 
where  a'specimen  of  an  invention  is  built  or  made  to  order, 
it  is  not  "  on  sale"  till  it  is  completed,  delivered,  and  ac- 
cepted.' 

§  97.  An  assignment  of  the  inchoate  right  to  an  invention, 
is  not  such  a  sale  as  will  be  obnoxious  to  the  statute  nowr 
under  explanation.4  So  far  from  furnishing  evidence  of 
abandonment,  the  sale  of  the  inchoate  right  to  a  patent 
indicates  an  expectation  that  such  a  patent  will  be  obtained, 
and  that  right  be  thus  translated  into  a  legal  title. 

§  98.  Precise  identity  between  the  thing  covered  by  the 
patent,  and  the  thing  which  the  inventor  allowed  to  be  in 
public  use  or  on  sale  more  than  two  years  before  he  applied 
for  that  patent,  is  not  necessary  to  constitute  constructive 
abandonment  of  the  invention  covered  by  the  latter.  It  is 
enough  if  the  two  devices  are  substantially  the  same,1  but 
it  is  not  enough  that  the  two  devices  perform  the  same 
function  and  are  somewhat  similar  in  construction  and  in 
mode  of  operation.* 

§  99.  No  constructive  abandonment  results  from  any 
mere  making  of  a  specimen  of  an  invented  thing  more  than 
two  years  before  his  application  for  a  patent.'  But  where 
an  invention  consists  in  a  process  of  making  a  thing,  the 
making  of  a  specimen  of  that  thing,  by  that  process,  is  a 

1  Graham  ».  McCormick,  5  Bann.  •  Hall  r.  Macneal,  107  U.  S.  90, 

&  Ard.  244,  1880;  Graham  e.  Mfg.  1882;  Theberath  e.  Trimming  Co. 

Co.  11  Fed.  Rep.  142,  1880.  15  Fed.  Rep.  251,  1883. 

»  Henry  c.  Soapstone  Co.  5  Bann.  «  Draper  t>.  Wattles.  3  Bann.  & 

&  Ard.  108,  1880.  Ard.  618,  1878. 

*  Campbell  «.  New  York,  45  Off.  7  Comstock  «.  Sandusky  Seat 

Gaz.  345, 1888.  Co.  8  Bann.  &  Ard.  188,  1878; 

4  Elm  City  Co.  ».  Wooster,  6  Campbell  r.  New  York,  36  Fed. 

Fisher,  452,  1873.  Rep.  261,  1888. 


78  ABANDONMENT.  [CHAP.  V. 

use  of  that  process,  and  is  therefore  subject  to  the  rules 
which  govern  using,  and  not  to  that  which  applies  to 
making  only. 

§  100.  Public  knowledge  of  an  invention,  acquired  with 
the  consent  of  the  inventor,  prior  to  his  application  for  a 
patent,  was  formerly  fatal  to  the  validity  of  any  patent 
granted  for  that  invention.  The  Patent  Act  of  1793 '  pro- 
vided that  to  be  patentable  a  thing  must  not  have  been 
known  before  the  making  of  an  application  for  a  patent 
thereon.  The  Supreme  Court  construed  that  enactment  to 
mean  only  that  the  invention  must  not  have  been  known  to 
the  public  with  the  consent  of  the  inventor.1  The  Patent 
Act  of  1836  repealed  all  prior  statutes  on  the  subject  of 
patents,  and  did  not  provide  that  any  unfavorable  effect  on 
an  inventor's  rights  should  result  from  public  knowledge  of 
his  invention,  acquired  at  any  time  after  its  production  by 
him.3  Nor  has  any  later  statute  made  any  such  provision. 
Since  1836  there  has,  therefore,  been  no  reason  for  an  in- 
ventor to  keep  his  invention  secret,  unless  he  proposed  to 
rely  upon  secrecy,  and  not  upon  a  patent,  for  his  profits,  or 
unless  he  feared  that  some  other  person,  obtaining  knowl- 
edge of  the  invention,  would  falsely  claim  it  as  his  own. 

§  101.  A  public  use  or  a  sale  of  a  specimen  of  a  newly  in- 
vented thing,  occurring  in  any  foreign  country  after  its  in- 
vention by  an  applicant  for  an  American  patent,  but  more 
than  two  years  before  his  application  is  made,  will  have 
the  same  effect  upon  such  a  patent,  as  it  would  have  had  if 
that  public  use  or  that  sale  had  occurred  in  the  United 
States.  That  part  of  Section  4886  of  the  Eevised  Statutes 
which  treats  of  public  use  or  sale  of  a  thing  after  its  inven- 
tion by  an  applicant,  is  not  limited  to  this  country ;  as  that 
part  is  which  treats  of  knowledge  or  use  by  others  of  that 
thing  before  its  invention  by  the  applicant.  It  is  true  that 
Section  4920,  which  provides  for  certain  defences  to  infringe- 


1  1    Statutes  at    Large,   Ch.   11,      18,  1829. 

Section  1,  p.  818.  3  Elizabeth  v.   Pavement  Co.   97 

2  Pennock  v.  Dialogue,  2  Peters,      U.  S.  136,  1877. 


CHAP.  V.]  ABANDONMENT.  79 

ment  suits,  provides  that  a  defendant  may  give  notice  and 
prove  that  the  invention  had  been  in  public  use  or  on 
sale  in  this  country  more  than  two  years  before  an  applica- 
tion for  a  patent,  and  does  not  provide  that  he  may  give 
notice  and  prove  that  any  such  sale  or  use  occurred  else- 
where. But  it  is  also  true  that  Section  4920  does  not  enu- 
merate all  the  defences  that  may  be  made  to  patent  suits. 
It  merely  provides  what  defences  may  be  made  under  the 
general  issue,  and  it  leaves  a  larger  number  to  be  set  up  in 
special  pleas.  That  section  does  not,  therefore,  negative  or 
tend  to  negative  the  effect  on  this  subject  of  Section  4886. 

§  103.  Constructive  abandonment  of  an  invention,  after 
an  application  for  a  patent  thereon,  necessarily  results  from 
constructive  abandonment  of  that  application,  in  certain 
classes  of  cases  which  are  explained  in  the  chapter  on  ap- 
plications.' In  still  another  class  of  cases,  constructive 
abandonment  of  an  invention,  after  an  application  for  a  pat- 
ent thereon,  necessarily  results  from  a  particular  kind  of 
constructive  abandonment  of  that  application,  unless  a  new 
application  is  filed  within  a  certain  time  after  such  abandon- 
ment. That  class  of  cases  is  the  following.  Where  an  ap- 
plicant omits  to  pay  the  final  fee  within  six  months  from 
the  time  at  which  his  application  w*as  allowed,  and  notice 
thereof  sent  to  him  or  to  his  agent,  and  where  he  also  omits 
to  make  any  new  application  for  a  patent  on  the  same  in- 
vention within  two  years  after  such  allowance,  he  can  never 
obtain  a  patent  for  that  invention.* 

§  104.  The  statutory  law  relevant  to  constructive  abandon- 
ment, resulting  from  a  public  use  or  from  a  sale  of  a  newly 
invented  thing,  more  than  two  years  before  an  application 
for  a  patent,  is  a  law  which  operates  inflexibly  npon  all 
cases  coming  within  it.  Its  effect  cannot  be  obviated  by 
any  evidence  showing  reasons  for  the  delay,  however  ample 
and  meritorious  those  reasons  may  be."  The  rule  of  this 
section  doubtless  applies  also  to  the  constructive  abandon- 
ment explained  in  the  last. 

1  Section  147  of  this  book.  »  Sisson  v.  Gilbert,  9  Blatch.  189, 

1  Revised  Statutes,  Section  4897.      1871. 


80  ABANDONMENT.  [CHAP    V. 

§  105.  Surrender  of  an  invention  may  be  effected  after 
the  grant  of  letters  patent  therefor,  by  means  of  a  formal 
surrender  of  those  letters  patent.  A  proceeding  of  the 
kind  was  mentioned  by  the  Supreme  Court  as  being  con- 
fessedly proper  as  early  as  1832,1  and  an  actual  surrender 
of  the  sort  was  tacitly  approved  by  that  tribunal  about 
twenty  years  later.9 

§  106.  No  abandonment  of  an  invention  after  the  issue  of 
letters  patent  thereon,  has  ever  been  judicially  decided  to 
exist  in  the  United  States.  The  Patent  Act  of  1832  3  pro- 
vided that  a  certain  class  of  aliens  might  obtain  United 
States  patents,  who  had  theretofore  been  excluded  from 
that  privilege ;  but  it  coupled  with  that  provision  an  enact- 
ment that  every  patent  granted  by  virtue  of  that  Act,  should 
cease  and  determine  in  case  of  failure  on  the  part  of  the 
patentee  to  introduce  the  invention  into  public  use  in  the 
United  States  within  one  year  from  the  issuing  of  the 
patent,  or  in  case  of  a  discontinuance  of  such  public  use 
for  any  period  of  six  months,  or  in  case  of  failure  on  the 
part  of  the  patentee  to  become  a  citizen  of  the  United 
States.  In  providing  such  a  rule  of  constructive  abandon- 
ment for  a  certain  class  of  aliens,  Congress  showed  that  it 
did  not  overlook  the  subject  of  non-user  of  patented  inven- 
tions ;  and  in  omitting  to  provide  any  such  rule  for  citizens 
of  the  United  States,  Congress  showed  that  it  did  not  in- 
tend constructive  abandonment  to  result  from  non-user  in 
their  cases.  Even  as  to  aliens,  the  policy  of  the  law  upon 
the  point  was  soon  given  up.  The  Act  of  1836  repealed  all 
former  patent  statutes,  and  did  not  re-enact  the  provision 
just  cited  from  the  Act  of  1832,  nor  put  any  corresponding 
restrictions  upon  any  class  of  patentees.  Nor  has  any  later 
statute  contained  any  provision  of  the  kind.  The  fair  in- 
ference from  this  course  of  legislation  seems  to  be,  that 
Congress  does  not  intend  any  patent  right  to  be  lost  on  any 
ground  of  non-user  of  that  right.  Even  before  Congress 

1  Grant  v.  Raymond,  6  Peters,  240,      1854. 

1832.  3  4  Statutes  at  Large,  Ch.  203,  p. 

2  Battin  v.  Taggert,  17  Howard,  74,      577. 


CHAP.   V.J  ABANDONMENT.  81 

had  thus  indicated  its  intention  on  the  subject,  Justice 
WASHINGTON  instructed  a  jury  that  no  disuser  of  an  inven- 
tion, after  it  is  patented,  can  amount  to  an  abandonment,  so 
as  to  deprive  the  patentee  or  his  assignees  of  their  exclusive 
right  to  it  for  the  term  of  the  patent.'  So  also  the  Supreme 
Court  has  held  that  no  presumption  arises  against  a  patent 
from  any  use  of  the  invention  by  the  public  after  the  patent 
is  granted.2  Since  no  abandonment  of  an  invention,  after  it 
is  patented,  can  arise  out  of  any  existing  statute,  or  be  based 
on  any  non-user  by  the  patentee,  or  on  any  user  by  the 
public,  we  seem  shut  up  to  the  conclusion  that  no  such 
abandonment  is  known  to  our  laws. 

§  107.  Acquiescence  by  a  patentee  in  unlicensed  use  of 
his  invention,  during  the  life  of  the  patent,  has  sometimes 
been  said  or  been  intimated  by  courts,  to  amount  to  an 
abandonment  of  the  patent  and  of  the  invention.  Four 
cases  containing  such  statements  or  suggestions  are  to  be 
found  in  the  reports.  In  two  of  them  the  judges  made 
their  observations  on  the  subject,  in  spite  of  their  decisions 
that  no  such  question  was  involved  in  the  pleadings.  In 
the  other  two  cases  the  views  of  the  judges  were  inserted  in 
charges  to  juries,  but  inasmuch  as  the  juries  found  for  the 
respective  plaintiffs,  it  seems  that  there  were  no  facts  in  the 
cases  which  called  for  such  statements  in  the  charges.  The 
opinions  of  the  four  judges  on  the  point  seem,  therefore,  to 
be  no  more  weighty  than  the  reasons  which  support  them. 
But  no  reasons  applicable  to  the  subject  of  abandonment  of 
a  patent  are  contained  in  either  of  the  cases,  though  one  of 
them  contains  statements  of  reasons  adapted  to  support  the 
doctrine  of  estoppel.  Nor  do  the  four  cases  agree  among 
themselves,  relevant  to  the  character  or  to  the  quantity  of 
acquiescence  needed  to  support  an  hypothesis  of  abandon- 
ment of  a  patent.  In  Wyeth  v.  Stone,1  Justice  STORY  in- 
timated that  such  acquiescence  must  be  without  objection, 


1  Gray  v.  James,  1  Peters  C.  C.      1833. 

403,  1817.  3  Wyeth  v.  Stone,  1  Story,  282, 

»  Shaw  v.  Cooper,  7  Peters,  320,      1840. 


83  ABANDONMENT.  [CHAP.  V. 

and  must  continue  for  a  series  of  years.  In  Ransom  v. 
New  York,1  Judge  HALL  placed  no  such  limitation  as  the 
last  of  these  upon  the  doctrine,  and  if  he  hinted  at  the  first 
of  them  he  hinted  but  vaguely.  In  Bell  v.  Daniels,2  Judge 
LEAVITT  said  that  it  would  require  a  strong  case  to  prove 
abandonment  of  a  patent  actually  granted.  •  In  Williams  v. 
Railroad  Co.,3  Judge  WALLACE  said :  "  Neither  does  mere 
delay  or  acquiescence  establish  an  abandonment  or  dedica- 
tion of  the  patent.  There  must  be  an  acquiescence  in  the 
appropriation  of  the  right,  of  such  a  character  as  reasonably 
to  induce  the  belief  that  the  owner  intended  to  relinquish  it 
to  the  public  use."  The  opinions  cited  in  this  section,  so 
far  as  they  disagree  with  the  statutes  and  decisions  cited  in 
the  last,  do  not  agree  in  that  disagreement,  and  they  seem 
insufficient  to  outweigh,  or  even  to  modify,  the  doctrine  set 
forth  in  that  section. 

§  108.  Questions  relevant  to  actual  or  to  constructive 
abandonment  of  inventions  are  questions  of  fact  ;4  and  every 
reasonable  doubt  relevant  to  any  such  question  should  be 
solved  in  favor  of  the  patent,  for  the  law  does  not  favor 
forfeiture.6 

1  Ransom  v.  New  York,  1  Fisher,  1854 ;  Kendall  v.  Winsor,  21  How- 
273,  1856.  ard,  330,  1858. 

2  Bell  v.  Daniels,   1  Bond,   219,          5  Pitts  «.  Hall,  2  Blatch.  238, 1851 ; 
1858.  McCormick  v.  Seymour,  2  Blatch. 

3  Williams  v.  Boston  &  Albany  256,  1851 ;   Birdsall  v.  McDonald,  1 
Railroad  Co.  4  Bann.  &  Ard.  441.  Bann.  &  Ard.  165,  1874;  Comstock 
1879.  v.   Sandusky  Seat  Co.  3  Bann.  & 

4  Battin  v.  Taggert,  17  Howard,  84,  Ard.  188,  1878. 


CHAPTEE  VL 


APPLICATIONS. 


109.  Constituents    of     applications 
for  patents. 

110.  The  petition. 

111.  Constituents  of  specifications. 

112.  The  preamble. 

113.  The  general  statement  of  the 
invention. 

114.  The  description  of  the  draw- 
ings. 

115.  The  detailed  description  of  the 
invention. 

116.  The  claim  or  claims. 

117.  Claims  in  machine  patents. 

118.  Claims  in  patents  for  manufact- 
ures. 

119.  Claims  in  patents  for  composi- 
tions of  matters. 

120.  Claims  in  process  patents. 
120rt.  Claims  in  design  patents. 

121.  The  signatures. 

122.  The  form  of  the  oath. 

123.  The  constituents  of  the  oath. 

124.  Affirmations. 

125.  The  Patent  Office  fees. 

126.  Drawings. 

127.  Models. 

128.  Specimens  of  compositions  of 
matter. 

129.  Dates  of  applications. 

130.  The  examination  by  the  Patent 
Office. 


131.  Notification  of  rejection. 

132.  Appeals. 

133.  Appeals  to  the  Supreme  Court 
of  the  District  of  Columbia. 

134.  Bills  in  equity  to  compel  the 
Commissioner  to  grant  patents. 

135.  Amendment  of  applications. 

136.  The  foundation  of  the  right  of 
amendment. 

137.  When  an  applicant  may  amend. 

138.  How  an  applicant  may  amend. 

139.  When  an  applicant  must  amend. 

140.  Interferences. 

141.  Number  of  interferences. 

142.  Decision  on  interference  is  not 
conclusive. 

143.  Caveats. 

144.  No  appeal  from  the  Commis- 
sioner in  interference  cases;  but 
relief  by  bill  in  equity. 

145.  Abandonment  of  applications. 

146.  Constructive   abandonment  of 
applications. 

147.  Constructive  abandonment  of 
application  working    construc- 
tive   abandonment   of    inven- 
tion. 

148.  Effect  of  Commissioner's  de- 
cision on  questions  relevant  to 
applications. 


§  109.  AN  application  for  a  patent  consists  of  the  follow- 
ing transactions.  The  deposit  in  the  Patent  Office  of  a 
written  petition  to  the  Commissioner  of  Patents  ;  the  like 
deposit  of  a  written  specification  of  the  invention  ;  the  mak- 

83 


84  APPLICATIONS.  [CHAP.  vi. 

ing  of  an  oath  ;  the  payment  of  the  Patent  Office  fee  ;  and 
in  some  cases  the  deposit  of  a  drawing ;  and  in  some  cases 
the  deposit  of  a  model ;  and  in  some  other  cases  the  deposit 
of  specimens.1  Applications,  and  proceedings  on  applica- 
tions, are  primarily  governed  by  the  provisions  of  the  Re- 
vised Statutes.  Where  those  provisions  do  not  cover  a 
particular  point,  that  point  is  governed  by  the  rules  of  the 
Patent  Office.3  Every  such  rule,  unless  it  is  inconsistent 
with  law,  is  as  authoritative  as  the  Revised  Statutes  them- 
selves.3 

§  110.  The  petition  is  a  communication  signed  by  the  ap- 
plicant and  addressed  to  the  Commissioner  of  Patents, 
stating  the  name  and  residence  of  the  petitioner,  and  re- 
questing the  grant  of  a  patent  for  the  invention  therein 
designated  by  name  and  by  a  reference  to  the  specification 
for  a  full  disclosure  thereof.4  "  The  petition  must  be  the 
petition  of  the  inventor,'and  not  of  an  assignee  of  the  inven- 
tor, though  it  may  properly  request  that  the  patent,  when 
granted,  shall  be  granted  to  an  assignee  ; B  and  it  must  so 
request  in  order  to  induce  the  Supreme  Court  of  the  District 
of  Columbia  to  order  the  Commissioner  to  issue  a  patent 
the  right  to  which  has  been  assigned.6  If,  however,  the  in- 
ventor dies  before  the  patent  is  granted,  the  petition  may  be 
made  and  signed  by  his  executor  or  administrator.' 

§  111.  The  specification  properly  consists  of  seven  parts. 
1.  The  preamble,  giving  the  name  and  residence  of  the 
applicant,  the  title  of  the  invention,  and  the  name  of  any 
foreign  country  from  which  he  or  his  assigns  may  have 
received  a  foreign  patent  for  the  same  invention,  and  other 
particulars  connected  therewith.  2.  A  general  statement 
of  the  nature  and  object  of  the  invention.  3.  A  brief 

1  Revised  Statutes,  Sections  4888,  4  Patent  Office  Rule  83. 
4889,  4890,  4891,  4892,  4893;  Rules  5  Revised  Statutes,  Section  4895; 
of  Practice  of   the  United   States  Patent  Act,  of  March  3,  1837,  Sec- 
Patent    Office,    revised    April    18,  tion  6. 
1888,  Rule  30.  •  Runstetler    v.   Atkinson,    Mac- 

*  Revised  Statutes,  Section  483.  Arthur  &  Mackey.  382.  1883. 

3  United   States  v.  Commissioner  7  -Revised  Statutes,  Section  4896; 

of  Patents,  22  Off.  Gaz.  1365,  1882.  Patent  Act  of  April  17,  1800,  Sec.  2. 


CHAP.  VI.]  APPLICATIONS.  85 

description  of  the  drawings,  if  drawings  are  made,  showing 
what  each  view  represents.  4.  A  detailed  description  of 
the  invention,  explaining  fully  its  construction  and  mode  of 
operation,  if  it  is  a  thing,  or  the  manner  of  performing  it,  if 
it  is  a  process.  5..  The  claim  or  claims.  6.  The  signature 
of  the  inventor.  7.  The  signatures  of  two  witnesses.1 

§  112.  The  preamble  states  the  name  and  residence  of  the 
inventor,  and  the  title  of  the  invention,  in  order  to  connect 
the  specification  with  the  petition ;  and  it  states  the  par- 
ticulars of  foreign  patents  previously  granted  for  the  same 
invention,  in  order  to  inform  the  Commissioner  whether  he 
is  to  grant  a  patent  for  seventeen  years,  or  whether,  in  pur- 
suance of  Section  4887  of  the  Revised  Statutes,  he  is  to  so 
limit  the  patent,  that  it  will  purport  to  expire  at  the  same 
time  with  some  foreign  patent  for  the  same  invention. 
There  is  no  statute  which  makes  it  the  duty  of  the  applicant 
to  furnish  the  Commissioner  with  information  on  that  sub- 
ject. If  he  omits  to  do  so,  and  if  the  Commissioner  ascer- 
tains the  facts  elsewhere,  and  limits  the  term  of  the  patent 
accordingly,  then  every  purpose  is  answered  that  would 
have  been  answered  if  the  applicant  had  stated  the  facts  in 
his  application.  The  rules  of  the  Patent  Office,  however, 
do  require  the  applicant  to  mention  such  a  foreign  patent, 
if  any  exists ; *  and  in  the  absence  of  such  mention  the 
Commissioner,  if  he  grants  a  patent,  grants  it  for  the  term 
of  seventeen  years.  If  subsequent  litigation  discloses  the 
prior  granting  of  a  foreign  patent  for  a  term  sooner  ending, 
it  will  be  impossible  for  the  United  States  patent  to  continue 
in  force  for  the  full  term  expressed  on  its  face.  The  Supreme 
Court  has  lately  held  that,  under  such  circumstances,  the 
patent  may  be  reformed  by  construction,  and  thus  be  given  the 
same  duration  that  it  ought  to  have  purported  to  have.*  But 
other  counts  had  previously  held  that,  under  the  same  cir- 
cumstances, a  patent  is  altogether  void.  The  subject  is  fully 
explained  in  the  seventh  chapter  of  this  book,  and  is  men- 
tioned in  this  place  in  order  to  show  the  practical  importance 

1  Patent  Office  Rule  39.  *  Patent  Office  Rule  80. 

3  Telephone  Cases,  126  U.S.  572,  1888. 


86  APPLICATIONS.  [CHAP.  vi. 

of  conforming  to  the  rule  of  the  Patent  Office  in  regard  to 
the  matter. 

§  113.  The  general  statement  of  the  nature  and  function 
of  the  invention,  is  a  convenient  mode  of  introducing  the 
detailed  description.  If  it  is  omitted  in  form,  it  will  neces- 
sarily be  inserted  in  substance  in  the  detailed  description 
itself. 

§  114.  The  description  of  the  drawings  is  a  convenience  in 
aid  of  their  understanding,  but  if  that  description  is  omitted, 
and  all  reference  to  the  drawings  is  excluded  from  the  speci- 
fication, no  statutory  requirement  is  necessarily  departed 
from.1  In  such  a  case,  however,  the  specification  would 
perhaps  be  impossible  to  be  understood,  and  therefore  be 
obnoxious  to  the  rules  stated  in  the  next  section. 

§  115.  The  detailed  description  must  be  full  enough,  and 
clear  enough,  and  concise  enough,  and  exact  enough,  to 
enable  any  person  skilled  in  the  art  or  science  to  which  it 
appertains,  or  with  which  it  is  most  nearly  connected,  to 
make  and  use  the  invention,  if  it  is  a  machine  or  a  manu- 
facture, or  to  compound  the  invention,  if  it  is  a  composition 
of  matter,  or  to  perform  the  invention,  if  it  is  a  process.2 
If  the  description  falls  below  this  standard,  the  patent,  if 
granted,  will  be  void.3  But  this  standard  may  be  reached, 
in  the  case  of  a  design,  by  a  reference  to  the  drawing  or 
photograph  4  annexed  to  the  specification. 

The  statute  also  says  that  in  case  of  a  machine,  the  appli- 
cant shall  explain  the  principle  thereof,  and  the  best  mode  in 
which  he  has  contemplated  applying  that  principle,  so  as  to 
distinguish  it  from  other  inventions.5  These  provisions 
must  be  read  in  the  light  of  their  avowed  object.  That 
object  is  identification.  The  first  provision  cannot  mean  that 
the  inventor  must  infallibly  explain  the  law  of  nature  which 
makes  his  machine  work  ;  for  if  it  means  that,  neither  Morse 
nor  Bell  complied  with  it  when  describing  the  telegraph  or 

1  Emerson  ®.  Hogg,  2  Blatch.  9,      62,  1853. 

1845.  4  Dobson  v.    Dornan,    118  U.  S. 

2  Revised  Statutes,  Section  4888.        14,  1885. 

3  O'Reilly  v.  Morse,  15  Howard,          *  Revised  Statutes,  Section  4888. 


CHAP.  VI.]  APPLICATIONS.  87 

the  telephone,  and,  indeed,  neither  Morse  nor  Bell  nor  any 
man  could  have  done  so.  The  second  provision  cannot 
mean  that  every  inventor  must  infallibly  judge  which  of 
several  forms  of  his  machine  will  eventually  be  found  to 
work  best,  for  if  it  means  that,  it  requires  what  is  often 
impossible :  requires  the  inventor  to  foresee  the  ultimate 
effects  of  new  and  comparatively  untried  causes.  The  first 
provision  means  that  the  essential  distinctive  characteristic 
of  the  machine  shall  be  explained ;  and  the  second  provision 
means  that  the  inventor  shall  state  the  mode  which  he  con- 
templates to  be  the  best.'  Inasmuch  as  the  validity  of  a 
patent  depends  on  the  sufficiency  of  the  description,  the 
subject  of  this  section  is  treated  with  more  detail  in  the 
chapter  on  letters  patent,  the  seventh  of  this  book.  Enough 
has  been  outlined  in  this  connection  to  show  what  kinds  of 
statements  those  descriptions  need  to  contain. 

§  116.  The  claim  or  claims  constitute  a  necessary  part  of 
every  specification.  The  statutory  requirement  in  this  re- 
gard is,  that  the  applicant  "  shall  particularly  point  out  and 
distinctly  claim  the  part,  improvement,  or  combination 
which  he  claims  as  his  invention."  *  The  practice  of  the 
Patent  Office  has  always  been  to  require  the  claim  or 
claims  to  be  made  in  that  part  of  the  specification  which 
immediately  precedes  the  signatures.  It  is  a  practice  of 
many  solicitors  of  patents  to  write  claims  in  vague  phrase- 
ology, with  an  idea  that  vagueness  is  elasticity,  and  that 
elasticity  is  excellence.  Such  a  practice  is  neither  honest 
nor  expedient.  It  is  not  honest,  because  it  is  often  intended, 
and  always  adapted  to  deceive  the  public,  and  to  lead  indi- 
viduals into  unintended  infringement.  It  is  not  expedient, 
because  dishonesty  is  bad  policy  in  matters  of  patents,  as 
in  all  other  human  affairs,  and  because  vagueness  of  claims 
may  make  a  patent  void  which  would  otherwise  be  valid. 
It  is  the  practice  of  many  other  solicitors  of  patents  to  write 
claims  in  loose  phraseology,  because  they  do  not  know  how 
to  write  precise  sentences.  By  multiplying  words  they 

1  Carver  v.  Mfg.  Co  2  Story,  433,      1857. 
1843;  Page  v.  Ferry,  1  Fisher,  309,          *  Revised  Statutes,  Section  4888. 


88  APPLICATIONS.  [CHAP.  vi. 

hope  to  hit  the  mark,  on  the  same  principle  that  the  user 
of  a  shotgun  hopes  to  hit  a  solitary  bird.  But  the  princi- 
ples which  apply  to  shotguns  do  not  apply  to  rhetoric. 
The  true  rhetorician  uses  a  rifle,  not  a  blunderbuss.  With 
him  every  word  hits  its  target,  because  it  is  adapted  to  do 
so,  and  because  he  knows  how  to  aim  it. 

Writing  a  claim  for  a  patent  may  require  as  many  points 
of  information  and  powers  of  mind,  as  can  ever  be  required 
for  any  prose  writing  of  similar  length.  More  than  half 
the  chapters  of  this  book  contain  such  points  of  informa- 
tion, but  neither  this  nor  any  other  law  book,  can  embody 
all  that  the  penner  of  such  a  claim  requires  to  know.  A 
few  leading  points  may,  however,  be  conveniently  stated  in 
this  place. 

§  117.  In  cases  where  the  description  sets  forth  an  entire 
machine,  the  applicant  may  lawfully  make  a  claim  coexten- 
sive with  the  description,  if  the  machine  as  a  whole  pos- 
sesses novelty.  But  such  a  claim  ought  seldom  to  be  the 
only  one  in  a  patent,  because,  for  reasons  stated  in  the 
chapter  on  infringement,  it  can,  in  most  cases,  be  readily 
evaded.  The  proper  practice  is  to  fix  upon  the  new  parts, 
or  new  sub-combinations,  which  the  described  machine 
contains,  and  to  make  a  separate  claim  for  each  of  those 
parts,  and  for  each  of  those  combinations.1  Indeed,  the 
applicant  may,  if  he  will,  apply  for  and  receive  a  separate 
patent  for  each  of  those  parts  and  combinations.8  In  either 
way  the  rights  of  the  inventor  may  be  secured,  because  it 
is  a  rule  of  infringement  that  a  patent  is  infringed  whenever 
any  one  of  its  claims  is  violated.  To  secure  a  particular 
part  of  a  machine,  a  claim  must  specify  that  part ;  and  to 
secure  a  particular  combination  of  some  of  the  parts  of  a 
machine,  a  claim  must  specify  all  of  those  parts,  and  the 
description  must  explain  their  joint  mode  of  operation,  and 
must  state  their  joint  function.3  And  a  combination  may 

1  Gill  9.  Wells,  22  Wallace,   24,      224,  1874. 

1874 ;  Adams  v.  Jones,  1  Fisher,  3  Parks  v.  Booth,  102  U.  S.  102, 
530,  1859.  1880. 

2  Corn-Planter  Patent,  23  Wallace, 


CHAP.  VI.]  APPLICATIONS.  89 

be  claimed  separately,  though  it  cannot  do  useful  work 
separately  from  the  residue  of  the  machine  or  apparatus  of 
which  it  constitutes  a  part.1 

§  118.  In  cases  where  the  description  sets  forth  a  manu- 
facture, there  ought  to  be  a  claim  for  each  of  its  patent- 
able  features  ;  for  if  there  is  but  one  claim,  and  if  all  those 
features  are  covered  by  it,  then  those  persons  who  manage 
to  dispense  with  even  the  least  of  them,  incur  no  liability 
by  making,  using,  or  selling  articles  which  possess  all  the 
others.* 

§  119.  In  cases  where  the  description  relates  to  a  compo- 
sition of  matter,  the  claim  should  cover  that  composition  in 
its  entirety,  and  should,  either  expressly,  or  by  reference  to 
the  description,  specify  the  respective  proportions  which 
the  different  ingredients  bear  to  each  other.3  But  where 
some  of  the  described  ingredients  may  be  dispensed  with, 
the  applicant,  if  he  states  that  fact  in  the  description,  may 
have  a  separate  claim  for  a  composition  of  matter  composed 
only  of  the  residue,  or  he  may  have  a  single  claim  covering 
the  indispensable  ingredients,  whether  with  or  without  the 
others/ 

§  120.  In  cases  where  the  description  relates  to  a  process, 
the  claim  should  cover  all  the  necessary  elements  in  that 
process,  and  cover  no  more.  If  it  covers  less  than  all  the 
necessary  elements,  it  will  not  secure  the  invention  de- 
scribed, and  will  not  secure  anything  of  value  as  a  patent. 
If  it  covers  more  than  the  necessary  elements,  it  can  be 
evaded  by  persons  who  omit  those  which  are  unnecessary, 
when  using  the  others. 

§  120a.  In  cases  where  the  description  and  its  accom- 
panying drawing  or  photograph  represent  a  design,  the 
claim  may  identify  its  subject  by  a  reference  to  that  draw- 
ing or  photograph.4 

1  Hancock  Inspirator  Co.  v.  Jenks,  1868. 

21  Fed.  Rep.  915,  1884.  4  Rubber  Co.  «.  Goodyear,  9  Wal- 

J  Prouty  v.  Ruggles,    16  Peters,  lace.  788,  1869. 

336,  1842.  •  Dobson  «.  Dornan,  118  U.  8. 14, 

3  Tyler  v.  Boston,  7  Wallace,  327,  1885. 


90  APPLICATIONS.  [CHAP.  VI. 

§  121.  The  signatures  of  the  applicant  and  of  the  wit- 
nesses must  embody  the  full  names  of  those  persons,  and 
must  be  legibly  written.1  The  grammatical  construction  of 
the  statutory  provision,  relevant  to  signatures,  seems  to  in- 
dicate that  the  document  signed  by  the  applicant,  and  not* 
the  signature  of  that  applicant,  is  the  thing  which  is  to  be 
attested  by  the  two  witnesses.  In  cases  where  language  of 
similar  character  has  been  used  in  statutes,  which  prescribe 
the  mode  of  attesting  wills,  it  has  been  decided  to  be  imma- 
terial, whether  the  witnesses  sign  before  or  sign  after  the 
execution  of  the  document ; 2  but  where  such  statutes  have 
provided  for  attesting  the  signatures  rather  than  the  will, 
it  is  the  law  that  the  document  is  void  if  the  witnesses  sign 
before  the  testator.3  It  is  the  practice  of  the  Patent  Office 
to  regard  the  attestation  as  being  attestation  of  the  signa- 
tures, and,  accordingly,  to  require  two  witnesses  for  each 
signature,  in  cases  of  joint  applications  for  joint  inventions. 
The  same  two  witnesses  may  indeed  attest  all  the  signa- 
tures ;  but  where  one  witness  attested  the  signature  of  one 
joint  inventor,  and  another  witness  attested  the  signature 
of  the  other,  of  two  joint  inventors,  the  Patent  Office  has 
held  the  attestation  to  be  insufficient. 

§  122.  The  oath  is  not  required  by  the  statute  to  be  in 
writing,  nor  to  be  recorded.  It  may  be  taken  anywhere  in 
the  United  States,  before  any  person  authorized  by  law  to 
administer  oaths  at  that  place  ;  or,  when  the  applicant  re- 
sides in  a  foreign  country,  it  may  be  taken  before  any  min- 
ister, charge  d'affairs,  consul,  or  commercial  agent,  holding 
commission  under  the  government  of  the  United  States,  or 
before  any  notary  public  of  the  foreign  country  in  which 
the  applicant  may  be.4 

Recital  in  the  letters  patent,  that  the  required  oath  was 
made  by  the  applicant,  is,  in  the  absence  of  fraud,  conclu- 
sive evidence  of  that  fact.5  The  presence,  in  the  files  of 

1  Patent  Office  Rule  40.  888. 

8  O'Brien  t>.  Gallagher,  25  Conn.          4  Revised  Statutes,  Section  4892. 
229,  1856.  •  Seymour  v.  Osborne,    11   Wal- 

3  Wharton  on  Evidence,  Section  lace,  516,  1870. 


CHAP.  VI.]  APPLICATIONS.  91 

the  Patent  Office,  of  a  paper  purporting  to  be  the  oath  in 
a  given  case,  but  void  for  lack  of  a  jurat,  or  for  some  other 
fault,  is  a  harmless  circumstance.1  In  such  a  case  the  law 
presumes  that  the  oath  recited  in  the  letters  patent  was 
made  orall}r,  or  was  embodied  in  some  other  paper.  It  is 
presumed  that  the  Commissioner  will  never  issue  a  patent 
till  he  is  satisfied  that  the  applicant  has  'somehow  made 
oath  to  the  facts  to  which  the  statute  requires  him  to 
swear.  When  the  Commissioner  is  so  satisfied,  and  re- 
cites the  fact  in  the  letters  patent,  all  inquiry  on  the  sub- 
ject is  foreclosed,  except  in  cases  of  actual  fraud.  Rule  47 
of  the  Patent  Office  provides,  however,  that  the  oath  or 
affirmation  is  to  be  attested  in  all  cases  by  the  proper 
official  seal  of  the  officer  before  whom  it  is  taken.  That 
implies  that  the  Commissioner  requires  the  oath  to  be  put 
into  writing.  If,  however,  he  were  to  waive  that  require- 
ment in  a  given  case,  and  were  to  content  himself  with  an 
oral  oath,  and  were  to  recifce  in  the  patent  that  the  required 
oath  was  made,  the  law  would  still  have  been  complied 
with. 

§  123.  The  statute  requires  an  applicant  to  make  oath 
that  he  does  verily  believe  himself  to  be  the  first  inventor 
of  the  invention  for  which  he  solicits  a  patent,  and  to  state 
of  what  country  he  is  a  citizen.*  The  Patent  Office  rules 
require  that  this  last  mentioned  statement  shall  also  be 
made  in  the  oath,  and  that  the  applicant  shall  also  state  in 
the  oath,  where  he  resides,  and  whether  the  invention  has 
been  patented  to  himself,  or  to  any  other  with  his  consent 
or  knowledge,  in  any  country,  and  if  it  has,  that  the  appli- 
cant shall  name,  under  oath,  such  foreign  country  or  coun- 
tries, and  shall  likewise  set  forth  the  number  and  date  of 
every  such  patent  granted  therein,  and  that,  according  to 
his  knowledge  and  belief,  the  same  has  not  been  in  public 


1  Crompton  v.  Belknap  Mills,   8  Hancock  Inspirator  Co.  v.  Jenks,  21 

Fisher,  536, 1869  ;  DeFlorez  v.  Ray-  Fed.  Rep.  914,  1884. 

nolds,  14  Blatch.  506,  1878  ;  Hoe  v.  s  Revised  Statutes,  Section  4893. 
Kahler,   12    Fed.  Rep.  Ill,   1882; 


92  APPLICATIONS.  [CHAP.  vi. 

use  in  the  United  States  for  more  than  two  years  prior  to 
the  application  in  this  country.1 

The  statute  of  1836,  which  was  in  force  till  the  approval 
of  the  Act  of  1870,  required  the  applicant  to  make  oath  or 
affirmation  of  what  country  he  was  a  citizen,2  whereas  the 
Act  of  1870,  and  the  Revised  Statutes,  require  only  his 
statement  on  th'at  subject.  The  old  law  governs  all  appli- 
cations made  before  July  8,  1870  ;  and  under  it  Justice 
GEIEE  decided  that  where  an  applicant  mentioned  a  wrong 
country  in  his  oath,  that  error  rendered  his  patent  void, 
even  though  it  arose  from  an  erroneous  opinion  relevant  to 
what  constituted  citizenship  of  the  United  States.3  But 
under  the  Statute  of  1870,  re-enacted  in  the  Revised  Stat- 
utes, such  an  error  does  not  invalidate  a  patent.4 

When  an  application  for  a  patent  is  made  by  an  executor 
or  administrator  of  a  deceased  inventor,  the  statute  directs 
the  oath  to  be  so  varied  in  form  that  it  can  be  made  by 
him.6  Whether,  in  such  a  case,  it  is  necessary  for  the  ap- 
plicant to  swear  that  he  believes  that  the  deceased  believed 
himself  to  be  the  first  inventor,  or  whether  it  is  necessary  for 
the  applicant  to  swear  that  he  believes  that  the  deceased  was 
in  fact  the  first  inventor  of  the  invention,  is  an  unsettled 
question.  If  the  first  is  the  true  view,  then  an  executor 
may  obtain,  without  perjury,  a  patent  for  an  invention 
which  he  may  know  to  have  been  previously  used  in  the 
United  States.  If  the  second  is  the  true  view,  then  an 
executor  may  be  unable  to  obtain,  without  perjury,  a  patent 
for  an  invention  never  before  known  or  used  in  this  country, 
and  not  previously  patented  or  described  in  any  printed 
publication,  in  this  or  in  any  foreign  country,  and  not 
known  or  believed  by  its  inventor,  to  have  been  previously 
known  or  used  anywhere  in  the  world.  In  the  first  of  these 
contingencies,  a  wrong  may  result  to  the  public,  and  in  the 
last,  a  wrong  may  result  to  the  beneficiaries  of  the  deceased. 

1  Patent  Office  Rules  46  and  39.  1854. 

2  5  Statutes  at  Large,   Ch.   357,  4  Tonduer  0.  Chambers,  37  Fed. 
Section  6,  p.  119.  Rep.  337,  1889. 

3  Child  0.  Adams,  1   Fisher,  193,  5  Revised  Statutes,  Section  4896. 


CHAP.  VI.]  APPLICATIONS.  93 

§  124.  An  affirmation  in  judicial  form  may  always  be  sub- 
stituted for  any  oath  required  by  any  United  States  statute.' 
Nor  is  this  rule  confined,  as  it  is  in  the  statutes  of  some  of 
the  States,  to  cases  where  the  affiant  informs  the  magistrate 
that  he  has  scruples  of  conscience  against  taking  an  oath. 

§  125.  The  Patent  Office  fee,  due  with  the  application  for 
a  patent  for  a  process,  machine,  manufacture,  or  composi- 
tion of  matter,  is  fifteen  dollars,  and  a  final  fee  of  twenty 
dollars  is  payable  after  such  a  patent  has  been  allowed  and 
before  it  is  issued.  The  fees  for  patents  for  designs,  vary 
with  the  length  of  the  terms  of  the  patents  applied  for. 
For  such  a  patent  for  three  years  and  six  months,  the  fee  is 
ten  dollars :  for  such  a  patent  for  seven  years,  the  fee  is 
fifteen  dollars :  for  such  a  patent  for  fourteen  years,  the  fee 
is  thirty  dollars."  Fees  for  design  patents  are  required  to 
be  paid  in  advance.1  The  final  fee,  above  mentioned,  must 
be  paid  within  six  months  after  the  patent  is  allowed,  and 
notice  thereof  is  sent  to  the  applicant  or  his  agent ;  and  if 
that  fee  is  not  paid  within  that  time,  the  statute  provides 
that  the  patent  shall  be  withheld.4  The  Commissioner  of 
Patents  has  no  jurisdiction  to  do  what  the  statute  forbids. 
If,  therefore,  he  were  to  issue  a  patent  on  an  application, 
the  final  fee  for  which  was  not  paid  till  more  than  six 
months  after  the  patent  was  allowed,  he  would  be  acting 
without  authority,  and  the  patent  would,  for  that  reason,  be 
void.  It  is  important,  therefore,  to  know  how  long  a  time 
the  six  months  is,  which  is  allowed  for  the  payment  of  that 
fee.  At  common  law,  a  month  is  a  lunar,  not  a  calendar 
month.'  Many  of  the  States  have  reversed  this  definition 
by  statute,  but  Congress  never  has.  It  is  therefore  the 
legal  definition  of  the  word  "month"  in  the  section 'now 
under  view.  Six  calendar  months  can  never  consist  of 
fewer  than  one  hundred  and  eighty-one  days,  while  six 
lunar  months  cover  a  space  of  time  about  two  weeks  shorter 


1  Revised  Statutes,  Section  1 .  *  Revised  Statutes,  Section  4885. 

*  Revised  Statutes,  Section  4934.  •  Blackstone,  Book  2,  Ch.  9. 

*  Patent  Office  Rule  217. 


94  APPLICATIONS.  [CHAP.  vi. 

than  that.  This  difference  should  be  regarded  by  applicants 
for  patents.  If  a  patent  were  granted  on  an  application, 
the  final  fee  for  which  was  paid  more  than  six  lunar  months 
after  the  patent  was  allowed,  that  patent  would  be  void  for 
want  of  jurisdiction  in  the  Commissioner  to  issue  it. 

§  126.  Drawings  are  required  by  the  statute  to  be  fur- 
nished by  applicants  for  patents,  in  all  cases  wherein  the 
invention  admits  of  representation  by  drawings.1  The  stat- 
utory requirement  relevant  to  the  character  of  such  draw- 
ings, is  merely  that  they  shall  be  signed  by  the  applicant 
or  by  his  attorney  in  fact,  and  shall  be  attested  by  two  wit- 
nesses. The  Patent  Office  rules  require,  in  addition,  that 
drawings  must  show  every  feature  of  the  invention  covered 
by  the  claims ;  and  when  the  invention  consists  of  an  im- 
provement on  an  old  machine,  must  exhibit,  in  one  or  more 
views,  the  invention  itself,  disconnected  from  the  old  struc- 
ture, and  also,  in  another  view,  so  much  only  of  the  old 
structure  as  will  suffice  to  show  the  connection  of  the  in- 
vention therewith.5  Those  rules  also  describe  numerous 
other  characteristics  for  drawings.3  They  are  all  necessary 
to  the  systematic  and  proper  conduct  of  the  business  of  the 
office,  and  must  be  carefully  followed  in  order  to  secure 
favorable  action  from  the  Commissioner. 

To  be  as  useful  as  possible,  all  drawings  for  letters  patent 
ought  to  show  the  true  positions  and  proportions  of  the 
parts  of  the  inventions  which  they  purport  to  delineate; 
but  it  is  not  necessary  that  they  be  accurate  enough  to  be 
used  as  working  drawings,  from  which  to  construct  speci- 
mens of  those  inventions.4 

Drawings  in  applications  filed  prior  to  July  8,  1870,  and 
after  July  4,  1836,  were  required  to  have  "  written  refer- 
ences." '  The  object  of  such  references  was  to  connect  the 
various  parts  of  the  drawings  with  the  corresponding  parts 

1  Revised  Statutes,  Section  4889.  4  Fisher,  284, 1870;  Royer  v.  Coupe, 

8  Pateiit  Office  Rule  50.  29  Fed.  Rep.  369,  1886. 

8  Patent  Office  Rule  51.  6  5  Statutes  at  Large,  Ch.  357,  Sec- 

4  American    Hide    and    Leather  tion  6,  p.  119. 
Splitting  Machine  Co.  v.  Machine  Co. 


CHAP.  VI.]  APPLICATIONS.  95 

of  the  specification ;  but  it  was  a  sufficient  compliance  with 
that  statute,  where  those  references  were  made  on  the  draw- 
ings, though  not  made  in  the  specification.1  The  present 
statute  says  nothing  about  any  references,  or  other  means 
of  connecting  drawings  with  specifications ;  but  the  Patent 
Office  rules  require  that  they  shall  be  connected  by  figures 
adjacent  to  the  different  views,  and  by  letters  or  figures  ad- 
jacent to  the  different  parts  of  the  drawings,  and  by  incor- 
porating those  figures  and  letters  in  the  descriptive  part  of 
the  specification.3 

§  127.  A  model  of  the  invention  is  required  by  the  statute 
to  be  furnished  by  the  applicant,  in  all  cases  wherein  the 
invention  admits  of  representation  by  model,  provided  the 
Commissioner  requires  a  model.*  This  proviso  was  jot  in 
the  statute  of  1836,  but  it  was  inserted  in  that  of  1870,  in 
order  to  enable  the  Commissioner  to  dispense  with  models, 
in  all  cases  where  their  utility  is  inferior  in  value  to  their 
cost,  and  to  the  room  they  would  occupy  in  the  Patent 
Office.  Under  the  operation  of  the  proviso,  models  are  at 
present  called  for  by  the  Commissioner  in  very  few  of  the 
cases  which  admit  of  representation  thereby. 

§  128.  Specimens  of  compositions  of  matter,  and  of  the 
ingredients  thereof,  are  required  by  the  statute  to  be  fur- 
nished by  applicants  for  patents  for  such  compositions  of 
matter,  in  all  cases  where  the  Commissioner  calls  for  such 
specimens.4  He  always  does  call  for  at  least  a  specimen  of 
the  composition,  put  up  in  proper  form  to  be  preserved, 
unless  that  composition  is  in  its  nature  perishable.* 

§  129.  An  application  for  a  patent  dates  from  its  filing  in 
the  Patent  Office,  and  not  from  the  day  of  its  execution  by 
the  applicant,  nor  from  the  day  of  the  deposit  of  a  model  in 
the  Patent  Office,  nor  from  the  day  of  the  deposit  of  any- 
thing there  less  than  the  full  application,8  but  where  an 

1  Emerson  t>.  Hogg,  2  Biatch.  1,  •  Draper  t>.  Wattles,  8  Bann.  & 

1845.  Ard.  818,  1878:  Henry  P.  Frances- 

*  Patent  Office  Rules  88  and  51.  town  Soap-stone  Stove  Co.  5  Banu. 

»  Revised  Statutes,  Section  4891.  &  Ard.  108,  1880;  Campbell  ».  New 

«  Revised  Statutes,  Section  4890.  York,  85  Fed.  Rep.  504,  1888. 
8  Patent  Office  Rule  62. 


96  APPLICATIONS.  [CHAP.  vi. 

application  is  divided  by  filing  a  new  one  for  part  of  its 
subject,  the  new  one  will  date  from  the  date  of  the  old  one.1 
In  the  absence  of  other  evidence,  the  date  of  the  application 
for  a  particular  patent,  is  taken  to  be  identical  with  the  date 
of  the  letters  patent  itself.2  Letters  patent,  and  printed 
certified  Patent  Office  copies  of  letters  patent,  not  old 
enough  to  have  expired,  always  have  upon  them,  in  the 
space  under  the  title,  a  memorandum  that  the  application 
therefor  was  filed  on  a  particular  specified  day.  But  no 
such  memorandum  is  evidence  of  the  fact  it  recites.  It  is 
not  evidence  at  common  law,  nor  in  pursuance  of  any  stat- 
ute. That  section  of  the  Revised  Statutes3  which  gives 
evidential  character  to  certain  certified  copies^  does  not  in- 
clude any  such  memorandum,  because  it  is  no  part  of  the 
letters  patent  upon  which  it  is  placed,  and  because  it  is  not 
a  copy  of  any  record,  book,  paper,  or  drawing  belonging  to 
the  Patent  Office.  It  is  an  indication  of  what  some  such 
record,  book,  or  paper  appears  to  show,  but  it  is  not 
evidence  of  its  own  accuracy,  nor  is  it  covered  by  the  cer- 
tificate attached  to  the  document  upoii  which  it  is  placed. 

§  130.  Those  transactions  which  constitute  an  original 
application  for  a  patent,  have  thus  far  constituted  the  sub- 
jects explained  in  this  chapter.  When  such  an  application 
is  made  by  any  person,  it  becomes  the  duty  of  the  Commis- 
sioner to  cause  an  examination  thereof,  and  of  the  inven- 
tion covered  thereby.  If,  upon  such  examination,  it  appears 
that  the  applicant  is  justly  entitled  to  a  patent  under  the 
law,  it  is  the  duty  of  the  Commissioner  to  issue  one  to  him 
for  that  invention.4  The  statute  does  not  prescribe  that  ("ie 
Commissioner  shall  cause  this  examination  to  be  made  by 
any  particular  subordinate,  and  he  may  overrule  the  deci- 
sion of  any  subordinate  to  whom  he  may  have  committed 
the  matter.* 

1  Smith  &  Griggs  Mfg.  Co.  v.  *  Revised  Statutes,  Sections  4893, 

Sprague,  123  U.  S.  250,  1887.  4886. 

4  Worley  v.  Tobacco  Co.  104  U.  B  Hull  v.  Commissioner  of  Patents, 

8.  342,  1881.  7  Off.  Gaz.  559,  1875;  8  Off/  Gaz. 

8  Revised  Statutes,  Section  892.  46,  1875. 


CHAP.  VI.]  APPLICATION'S.  97 

The  examination  may  extend  not  only  to  the  novelty  of 
the  invention  covered  by  the  application,  but  also  to  any 
other  question  of  fact,  upon  which  the  validity  of  the  pat- 
ent, if  granted,  may  be  expected  to  depend.  If  the  inves- 
tigation of  any  such  question  necessitates  the  taking  of 
testimony  by  the  Commissioner,  he  cannot  take  that  tes- 
timony in  the  form  of  ex-parte  affidavits,  but  must  take  it 
in  the  form  of  depositions,  made  upon  notice  to  the  appli- 
cant to  appear  and  cross-examine  the  deponents.1 

§  131.  Whenever,  after  an  examination,  any  application 
for  a  patent  is  rejected,  it  is  the  duty  of  the  Commissioner 
to  notify  the  applicant  thereof,  giving  him  the  reasons  for 
such  rejection,  together  with  such  information  and  refer- 
ences, as  may  be  useful  in  judging  of  the  propriety  of  pros- 
ecuting the  application,  or  of  altering  the  specification  ; 
and  if,  after  receiving  such  a  notice,  the  applicant  persists 
in  his  request  for  a  patent,  with  or  without  altering  his 
specification,  it  thereupon  becomes  the  duty  of  the  Commis- 
sioner to  cause  a  re-examination  of  the  case.' 

§  132.  If,  without  amending  his  specification,  the  appli- 
cant persists  in  his  request  for  a  patent,  and  if  the  appli- 
cation is  again  rejected  by' the  primary  examiner,  to  whom 
the  Commissioner  referred  the  case,  then  the  applicant  may 
appeal  to  the  board  of  examiners-in-chief ; '  and  if  unsuc- 
cessful there,  he  may  appeal  to  the  Commissioner  in  person  ;* 
and  if  the  Commissioner  refuses  to  grant  him  a  patent,  the 
applicant  may  appeal  to  the  Supreme  Court  of  the  District 
of  Columbia  sitting  in  bane,*  but  not  to  the  Secretary  of  the 
Interior ; 8  and  if  the  Commissioner  refuses  to  allow  that 
appeal,  he  may  be  compelled  to  do  so,  by  a  writ  of  manda- 
mus, granted  by  the  latter  tribunal,  upon  the  petition  of 
the  applicant.7  These  appeals  must  all  be  heard  on  the 

1  Alteneck's  Appeal,  23  Off.  Gaz.          6  Revised  Statutes,  Section  4911. 
269,  1882.  •  Butterworth  *.  Hoe,  112  U.  S. 

2  Revised  Statutes,  Section  4903;      50,  1884. 

Patent  Office  Rule  65.  '  Commissioner    of      Patents    0. 

3  Revised  Statutes,  Section  4909.        Whiteley,  4  Wallace,  533,  1866. 

4  Revised  Statutes,  Section  4910. 


"98  APPLICATIONS.  [CHAP.  vi. 

case  as  submitted  to  the  primary  examiner.1  No  appeal, 
therefore,  should  be  taken  until  the  application  is  in  such 
a  condition  that  the  patent  will  issue,  if  the  decision  of  the 
primary  examiner  is  reversed.3  If  that  decision  is  reversed 
by  the  board  of  examiuers-in-chief,  the  primary  examiner 
can  require  no  amendment,3  but  must  pass  the  case  for  issue. 
If  the  board  affirms  the  decision  of  the  primary  examiner, 
the  Commissioner  will  not  reverse  the  board  on  any  ques- 
tion of  fact,  unless  its  decision  was  clearly  against  the 
weight  of  evidence.4  If  the  Commissioner  affirms  the  deci- 
sion of  the  board,  because  the  patent  ought  not,  in  his 
judgment  to  issue,  he  need  assign  but  one  reason  for  that 
opinion.  The  applicant  cannot  demand  of  him  that  he  pass 
upon  any  other  question/  And  the  Commissioner  may  at 
any  time  before  the  issue  of  a  patent  reverse  his  own  or 
any  other  favorable  patent  office  action  thereon,  and  reject 
the  application.8 

§  133.  Where  an  appeal  is  taken  to  the  Supreme  Court  of 
the  District  of  Columbia,  the  applicant  is  required  to  give 
notice  thereof  to  the  Commissioner,  and  to  file  in  the  Patent 
Office,  within  such  time  as  the  Commissioner  shall  appoint, 
his  reasons  for  the  appeal,  specifically  set  forth  in  writing.7 

The  court,  before  hearing  the  appeal,  gives  notice  to  the 
Commissioner  of  the  time  and  place  thereof,  and  the  Commis- 
sioner is  required,  thereupon,  to  give  like  notice  to  all  per- 
sons who  appear  to  be  interested  in  the  case.  The  ap- 
plicant is  required  to  lay  before  the  court,  at  the  hearing, 
certified  copies  of  all  the  papers  in  the  case,  and  the  Com- 
missioner is  required  to  furnish  the  court  with  a  full  writ- 
ten statement  of  the  grounds  of  his  decision  ;  and  at  the  re- 
quest of  any  party  interested,  or  of  the  court,  the  Commis- 


1  Hammond's  Appeal,  2  Off.  Gaz.  Gaz.  747,  1876. 
57,  1872.  6  Commissioner    of      Patents    v. 

s  Mewes'  Appeal,  2  Off.  Gaz.  617.  Whiteley,  4  Wallace.  532,  1866 
1872.  6  United  States  v.  Butterwortb,  3 

3  Brunner's  Appeal,  1  Off.    Gaz.  Mackey.  233,  1884. 

303,  1872.  7  Kevised  Statutes,  Section  4912. 

4  Hazel ip  v.  Richardson,  10  Off. 


CHAP.  VI.]  APPLICATIONS.  99 

sioner  and  the  examiners  may  be  examined  under  oath,  in 
explanation  of  the  principles  of  the  thing  for  which  a  pat- 
ent is  demanded.'  The  court,  thereupon,  hears  the  case  in 
a  summary  way,  on  the  evidence  produced  before  the 
Commissioner,  and  confines  its  revision  of  the  Commis- 
sioner's decision,  to  the  points  set  forth  in  the  applicant's 
reasons  of  appeal.  Having  decided  the  questions  involved, 
the  court  gives  the  Commissioner  a  certificate  of  its  pro- 
ceedings and  decisions,  which,  being  entered  of  record  in 
the  Patent  Office,  governs  the  further  proceedings  in  the 
case.  No  such  decision,  however,  precludes  any  person 
from  contesting  the  validity  of  any  patent  issued  in  pur- 
suance thereof,  in  any  court  wherein  that  validity  may  be 
called  in  question.2  And  no  such  decision,  if  adverse  to 
the  applicant,  deprives  the  Commissioner  of  jurisdiction  to 
grant  a  patent  for  the  same  invention,  on  a  later  and  proper 
application  of  the  same  inventor.* 

§  134.  "Whenever  a  patent  is  refused  by  the  Commissioner 
of  Patents,  or  by  the  Supreme  Court  of  the  District  of  Co- 
lumbia, on  appeal  from  the  Commissioner,  the  applicant 
may  file  a  bill  in  equity  in  any  United  States  Circuit  Court 
having  or  acquiring  jurisdiction  of  the  parties.4  The  only 
way  in  which  any  such  Circuit  Court  can  acquire  jurisdic- 
tion of  the  Commissioner,  is  by  his  voluntary  appearance 
therein  and  submission  thereto,  but  the  Supreme  Court  of 
the  District  of  Columbia  has  jurisdiction  over  him,  for  the 
purposes  of  this  law,  by  virtue  of  his  official  residence  in 
Washington,  in  that  District.5  The  complainant  in  such  a 
bill  may  be  the  inventor-applicant,  or,  in  case  of  an  assign- 
ment of  the  invention,  he  may  be  the  assignee,  because  the 
latter  is  considered  to  be  an  applicant  within  the  meaning 
of  the  law  on  this  subject?  If  there  is  no  opposing  party, 

1  Revised  Statutes,  Section  4913.  and  Section  629,  1  9. 

*  Revised  Statutes,  Section  4914;  *  Butterworth  e.  Hill,  114  U.  B. 

Fry  T.  Quinlan,  13  Blatch.  205. 1875.  129, 1885. 

8  United  States  «.  Colgate,  32  Fed.  •  Gay  «.  Cornell,  1  Blatch.  508. 

Rep.  624.  1884.  1849. 

4  Revised  Statutes,  Section  4915. 


100  APPLICATIONS.  [CHAP.  VI. 

a  copy  of  the  bill  is  required  to  be  served  on  the  Commis- 
sioner ;  but  the  Secretary  of  the  Interior  is  not  a  proper 
party  to  such  a  bill ; l  and  the  Commissioner  is  not  a  neces- 
sary party,  where  there  is  a  party  whose  interests  are  those 
which  are  adverse  to  the  interests  of  the  complainant ; 2  and 
in  that  case  the  bill  may  be  filed  in  the  Circuit  Court  of  the 
United  States  for  that  District  wherein  that  party  is  an  in- 
habitant.3 Where  either  class  of  these  conditions  are  ful- 
filled, the  court  has  jurisdiction  to  adjudge  that  the  ap- 
plicant is  entitled  to  receive  a  patent  for  his  invention,  as 
specified  in  his  claims,  or  for  any  part  thereof,  as  the  facts 
in  the  case  may  appear  to  be ;  and  such  an  adjudication,  if 
made,  authorizes  the  Commissioner  to  issue  such  a  patent, 
on  the  applicant's  filing  in  the  Patent  Office  a  copy  of  the 
adjudication,  and  otherwise  complying  with  the  require- 
ments of  the  law;4  and  it  then  becomes  the  duty  of  the 
Commissioner  to  issue  the  patent.5  But  no  court  has  any 
jurisdiction  to  restrain  the  Commissioner  from  issuing  a 
patent  to  the  defendant,  in  any  such  case  as  those  treated  in 
this  section.8 

In  order  to  decide  the  issues  of  such  a  bill  in  equity  as  is 
treated  in  this  section,  the  court  where  the  bill  is  pending 
will  take  testimony,  and  any  other  admissible  evidence,  ac- 
cording to  the  course  of  courts  of  equity,  and  will  also  con- 
sider whatever  was  before  the  Patent  Office  in  the  proceed- 
ings which  resulted  in  the  refusal  to  grant  a  patent,  and,  if 
the  case  has  been  before  the  Supreme  Court  of  the  District 
of  Columbia,  will  also  consider  the  proceedings  which  took 
place  in  that  tribunal.7  The  litigation  explained  in  this 
section,  is  therefore  original  and  not  appellate  litigation. 


1  Kirk  v.  Commissionerof  Patents,  62.  1884;   Vermont  Farm  Machine 

37  OS.  Gaz.  451,  1886.  Co.  v.  Marble,  20  Fed.  Rep.  118, 

*  Graham  «.  Teter,  25  Fed.  Rep.  1884 

555,  1885.  6  Whipple  v.  Miner,  15  Fed.  Rep. 

3  24  Statutes  at  Large,  Ch.  373,  p.  117,  1883. 

552.  7  Butterworth  v.  Hoe,  112  U.  S. 

4  Revised  Statutes,  Section  4915.  61,  1884  ;  Gandy  v.  Marble,^  123  U. 

*  Butterworth  «.  Hoe.  112  U.   S.  S.  439,  1886. 


CHAP.   VI.]  APPLICATIONS.  101 

But  it  may  not  be  resorted  to,  as  a  concurrent  remedy  with 
an  appeal  to  the  Supreme  Court  of  the  District  of  Columbia, 
in  any  case  where  such  an  appeal  lies ;  because  where  that 
remedy  exists  it  must  be  exhausted  before  the  ultimate  re- 
dress obtainable  by  a  bill  in  equity  can  be  invoked.1  Where 
an  application  is  brought  before  the  Commissioner  to  decide 
an  interference  question,  or  where  he  withholds  a  patent  by 
virtue  of  his  general  supervisory  authority,  the  remedy  now 
under  consideration  is  the  only  one  to  which  the  applicant 
can  resort,  for  no  appeal  lies  to  the  Supreme  Court  of  the 
District  of  Columbia,  nor  can  any  writ  of  mandamus  be 
granted  by  that  tribunal,  to  compel  the  Commissioner  to 
issue  a  patent  in  such  cases.2 

The  remedy  delineated  in  this  section  must  be  invoked 
within  two  years  after  the  last  official  action  on  the  applica- 
tion ;  unless  the  complainant  satisfies  the  court  in  which  it 
is  invoked,  that  the  longer  delay  was  unavoidable.8 

§  135.  The  right  to  amend  applications  for  patents  is  one 
of  great  value  and  frequent  exercise,  but  it  has  never  been 
expressly  established  by  any  statute.  No  statute  prior  to 
that  of  1836  even  mentioned  the  subject,  and  that  statute 
only  provided  that  whenever  it  appeared  to  the  Commis- 
sioner, that  one  or  more  of  the  claims  of  an  application 
were  inadmissible  for  want  of  novelty,  or  that  the  descrip- 
tion was  defective  and  insufficient,  he  should  notify  the  ap- 
plicant thereof,  and  should  furnish  him  with  such  informa- 
tion as  might  be  useful  in  judging  of  the  propriety  of  altering 
his  specification,  so  as  to  exclude  that  part  of  the  subject- 
matter  found  not  to  be  new.4  No  change  relevant  to  this 
point  was  made  in  the  statute  till  1870,  when,  in  the  place 
of  the  foregoing  provision,  it  was  enacted  that  whenever  any 
claim  was  rejected,  for  any  reason  whatever,  the  Commis- 
sioner should  notify  the  applicant  thereof,  and  should  fur- 

1  Kirk  v.  Commissioner  of  Patents,  3  Gandy  t>.  Marble,  122  U.  S.  439, 

37  Off.  Gaz.  451,  1886.  1886. 

s  Hull  v.  Commissioner  of  Patents,  4  5  Statutes  at  Large,  Ch.  357,  Sec- 

7  Off.  Gaz.  559, 1875 ;  8  Off.  Gaz.  46,  tion  7,  p.  120. 
1875. 


102  APPLICATIONS.  [CHAP.   VI. 

nish  him  with  such  information  as  might  be  useful  in 
judging  of  the  propriety  of  altering  his  specification.1  The 
present  statute  on  the  subject  is  substantially  identical  with 
that  of  1870.8 

There  is  no  apparent  material  difference,  at  this  point, 
between  any  of  the  three  statutes,  unless  the  provision  in 
that  of  1836,  relevant  to  the  nature  of  the  amendment  con- 
templated by  that  section,  constitutes  a  limitation  not  found 
in  either  of  the  others.  The  two  later  statutes  provide  that 
the  Commissioner  shall  furnish  the  applicant  with  such  in- 
formation as  may  be  useful  in  judging  of  the  propriety  of 
altering  his  specification.  The  earlier  statute  adds  to  that 
provision  the  words  :  "  to  embrace  only  that  part  of  the  in- 
vention or  discovery  which  is  new."  All  three  of  the  stat- 
utes recognize  the  right  of  an  applicant  to  alter  his  speci- 
fication, after  rejection  of  any  claim  therein.  They  differ 
from  each  other  only  in  regard  to  the  kind  of  information 
which  they  require  the  Commissioner  to  furnish  the  appli- 
cant, to  guide  him  in  the  exercise  of  that  right.  Neither  of 
them  furnishes  the  foundation  of  that  right,  or  limits  that 
right  to  cases  where  the  application  has  been  rejected. 
They  all  provide  a  proceeding  for  such  cases,  but  neither  of 
them  negatives  the  existence  of  such  a  right  in  other  cases. 

§  136.  The  real  foundation  of  the  right  to  amend  applica- 
tions for  patents,  is  found  in  Section  4888  of  the  Revised 
Statutes,  a  section  substantially  identical  with  Section  26 
of  the  Patent  Act  of  1870,  and  with  the  second  sentence  of 
Section  6  of  the  Patent  Act  of  1836,  and  with  the  middle 
part  of  Section3  of  the  Patent  Act  of  1793.  Ever  since 
1793,  one  or  another  of  these  four  enactments  has  been  in 
force,  and  has  provided,  in  substance,  that  before  any  in- 
ventor shall  receive  a  patent  for  his  invention,  he  shall  file 
in  the  Patent  Office  a  full,  clear,  and  exact  written  descrip- 
tion of  that  invention.  Ever  since  1836,  one  or  another 
of  the  three  statutes  first  mentioned  has  been  in  force, 


1 16  Statues  at  Large,  Ch.  230,          2  Revised  Statutes,  Section  4903. 
Section  41,  p.  204. 


CHAP.  VI.]  APPLICATIONS.  103 

and  has  additionally  provided  that  before  any  inventor 
shall  receive  a  patent,  he  shall  particularly  point  out  and 
claim  the  part  or  combination  which  he  claims  as  his  in- 
vention. Now  when  a  statute  enacts  that  a  thing  shall  be 
done  before  a  particular  event  can  occur,  it  implies  that  it 
can  be  done  prior  to  such  an  event.  An  inventor  may 
therefore  do  those  things  before  he  receives  a  patent.  If  he 
fails  in  his  first  attempt  to  furnish  a  proper  arid  adequate 
description,  or  to  furnish  proper  and  adequate  claims,  he 
may  try  again,  and,  if  necessary,  still  again  and  again.  If 
he  finally  succeeds  in  both,  the  Commissioner-  acquires 
jurisdiction  to  grant  him  a  patent,  provided  all  the  other 
requirements  of  the  law  are  also  complied  with.  The  stat- 
ute does  not  attend  to  the  details  of  this  matter.  It  only 
provides  that  at  some  time  before  a  patent  is  issued,  a  proper 
description  and  a  proper  claim  shall  be  filed  in  the  Patent 
Office.  To  what  extent  these  things  must  be  done  at  first, 
and  to  what  extent  and  under  what  circumstances  they  may 
be  done  by  way  of  amendment  of  the  original  papers,  are 
matters  which  Section  483  of  the  Revised  Statutes  relegates 
to  the  regulation  of  the  Commissioner  of  Patents,  subject 
to  the  approval  of  the  Secretary  of  the  Interior.  To  ascer- 
tain, therefore,  what  may  and  what  may  not  be  done  by  way 
of  amendments  of  applications,  the  true  recourse  is  to  the 
rules  of  the  Patent  Office. 

§  137.  The  applicant  may  amend  before  or  after  the  first 
rejection,  and  he  may  amend  as  often  as  the  examiner  pres- 
ents any  new  references  or  reasons  for  rejection  ;  but  after 
such  action  on  all  the  claims  as  entitles  the  applicant  to  an 
appeal  to  the  board  of  examiners-in-chief,  no  amendment  is 
allowed,  unless  the  applicant  convinces  the  examiner  or  the 
Commissioner  that  there  was  a  sufficient  excuse  for  the  de- 
lay in  presenting  it.1  Amendments  not  affecting  the  merita 
may  be  made  after  the  patent  is  allowed,  and  even  after 
the  final  fee  is  paid,  provided  those  amendments  are  ap- 
proved first  by  the  examiner,  and  then  by  the  Commis- 
sioner.* 
1  Patent  Office  Rule  68.  »  Patent  Office  Rule  78. 


104  APPLICATIONS.  [CHAP.   VI. 

§  138.  In  original  applications  which  are  capable  of  illus- 
tration by  drawing  or  model,  all  amendments  of  the  model, 
drawings,  or  specification,  or  of  additions  thereto,  must 
conform  to  at  least  one  of  them,  as  they  existed  at  the  time 
of  filing  the  application.  Matter  not  found  in  either,  and 
involving  a  departure  from  the  original  invention,  cannot 
be  introduced  by  way  of  amendment,  but  can  be  shown  or 
claimed  only  in  a  separate  application.  Where  the  in- 
vention covered  by  an  application  does  not  admit  of 
illustration  by  drawing,  or  by  model,  amendment  of  the 
specification  is  permitted,  upon  proof,  satisfactory  to  the 
Commissioner,  that  the  matter  covered  by  the  amendment 
was  a  part  of  the  original  invention.1  When  an  inventor 
files  an  application  for  a  patent,  he  is  regarded  as  applying 
for  such  a  patent  as  will  cover  every  patentable  thing  repre- 
sented either  in  the  specification,  drawing,  or  model  of  that 
application.2  If,  therefore,  his  claims,  as  first  submitted  to 
the  Commissioner,  do  not  cover  every  such  thing,  he  may 
amend  them  to  whatever  extent  is  necessary  to  make  them 
do  so,  or  he  may  add  other  claims  to  accomplish  that  pur- 
pose. 

§  139.  An  applicant  must  amend  his  specification,  when- 
ever such  amendment  is  required  to  correct  inaccuracy  or 
unnecessary  prolixity  therein,  or  to  secure  correspondence 
between  the  claim  and  the  other  parts  of  the  specification.* 
So  also,  unless  the  original  drawings  and  model  conform  to 
certain  standards  of  artistic  and  mechanical  excellence  set 
forth  in  the  rules,  the  applicant  must  furnish  amended 
drawings  and  an  amended  model  which  do  conform  to  those 
requirements.4 

§  140.  An  interference  is  a  proceeding  carried  on  in  the 
Patent  Office,  for  the  purpose  of  determining  the  question 
of  priority  between  two  or  more  parties,  each  of  which  is 
seeking  a  patent  for  the  same  invention  ;  or  between  two  or 
more  parties,  at  least  one  of  which  is  seeking  a  patent  for 

1  Patent  Office  Rule  70.  3  Patent  Office  Rule  71. 

2  Singer  v.  Braundsdorf,  7  Blatch.          4  Patent  Office  Rules  49  to  59. 
532,  1870. 


CHAP.  VI.]  APPLICATIONS.  105 

an  invention  already  covered  by  a  patent  which  has  not  yet 
expired.1  The  proceedings  in  interferences  are  governed  by 
an  elaborate  code  of  Patent  Office  rules,  which  are  as  bind- 
ing as  the  law  itself,*  and  to  which  the  practitioner,  in  such 
cases,  will  necessarily  resort  for  detailed  information.'  It 
is  unnecessary  to  explain  those  rules  in  this  text-book,  but 
it  is  expedient  to  set  down  in  this  connection  the  relevant 
rules  of  law,  which  rest  directly  upon  the  statutes  and  de- 
cisions for  their  sanction. 

§  141.  There  is  no  limit  to  the  number  of  interferences  to 
which  an  application  may  be  subjected ;  and  if  a  patent  is 
issued  without  going  through  every  such  proceeding,  pre- 
viously ordered  by  the  Commissioner,  that  patent  will  be 
void.*  The  ordinary  rules  of  evidence  which  are  applied  in 
United  States  courts  are  used  in  interference  cases.6  This 
includes  the  rules  which  relate  to  dispensing  with  evidence 
of  facts  of  public  notoriety."  The  doctrines  of  estoppel  also 
apply  in  these  contests,  in  the  same  manner  in  which  they 
apply  in  other  litigious  proceedings.' 

§  142.  No  decision  of  the  Commissioner,  in  any  interfer- 
ence case,  is  pleadable  as  res  judicata  in  any  action  in  any 
court.8  Such  a  decision  merely  settles  the  immediate  action 
of  the  Patent  Office.  If  it  is  made  between  two  or  more 
applications,  a  patent  is  granted  to  the  inventor  decided  to 
be  first,  and  no  patent  is  granted  to  either  of  the  others.  If 
it  is  made  between  an  application  and  a  patent,  and  is  made 
in  favor  of  the  application,  the  Commissioner  will  grant  a 

1  Revised  Statutes,  Section  4904  ;  404,  1876. 

Patent    Office    Rule    93;'     United  *  An  son    v.   Woodbury,   12    OS. 

States  v.  Commissioner  of  Patents,  Gaz.  1,  1877. 

7  Off.  Gaz.  603,  1875.  '  Berry  «.  Stockwell,  9  Off.  Gaz. 

s  Arnold  v.  Bishop,  1  Me  Arthur's  404,  1876. 

Patent    Cases,    31,    1841 ;    United  8  Union  Paper  Bag  Machine  Co. 

States  v.   Marble,    2    Mackey,    12,  v.  Crane,  1  Bann.  &Ard.  494,  1874; 

1882.  Gloucester  Isinglass  Co.  t>.  Brooks, 

3  Patent  Office  Rules  93  to  132,  19  Fed..  Rep.  427,  1884 ;  Hubel  t>. 
and  146  and  147.  Tucker,    24  Fed.  Rep.    701,   1885 ; 

4  Potter  v.  Dixon,  2  Fisher,  381,  Kirk  e.  DuBois,  33  Fed.  Rep.  252, 
1863.  1887. 

5  Berry  t>.  Stockwell,  9  Off.  Gaz. 


106  APPLICATIOXS.  [CHAP.  vi. 

patent  thereon,  but  he  cannot  recall  the  patent  already  is- 
sued. In  such  a  case,  the  rival  inventors  may  litigate  their 
interference  controversy  anew,  on  the  equity  side  of  any 
United  States  Circuit  Court  which  has  or  can  acquire  juris- 
diction of  the  parties.1  That  kind  of  litigation  constitutes 
the  subject  of  the  chapter  on  interfering  patents ;  the  thir- 
teenth chapter  of  this  book.  Or  the  question  of  priority 
between  the  two  inventors  may  be  litigated  afresh  in  any 
infringement  suit,  brought  by  one  of  them  against  the  other. 
If,  in  such  a  case  as  that  under  present  consideration,  it  had 
happened  that  the  successful  applicant  had  filed  his  appli- 
cation before  the  interfering  patent  was  granted,  that  patent 
would  not  have  been  granted  at  all,  unless  the  Patent  Office 
decision  on  the  interference  had  been  reversed  by  some  higher 
authority.  In  that  event  the  successful  applicant  would 
not  have  been  liable  to  any  interference  suit,  or  any  in- 
fringement suit,  brought  against  him  by  his  rival ;  for  his 
rival  would,  in  that  event  have  no  patent  upon  which  to  base 
a  suit  of  either  of  those  kinds.  For  this  reason,  as  well  as 
for  others,  every  inventor  who  desires  to  secure  a  patent  for 
an  invention,  should  make  his  application  therefor  as  soon 
as  possible  after  making  that  invention.  If,  however,  that 
invention  requires  time  in  reaching  maturity,  the  inventor 
may  prevent  the  issuing  of  any  interfering  patent  in  the 
mean  time,  by  filing  a  caveat  in  the  Patent  Office. 

§  143.  A  caveat  is  a  document  in  which  an  inventor  states 
the  function,  and  the  distinguishing  characteristics,  of  the 
invention  to  which  it  refers,  and  prays  protection  for  his 
right  thereto,  until  he  shall  have  matured  that  invention. 
A  caveat  remains  in  force  only  one  year ;  and  while  it  is  in 
force,  its  only  statutory  function  is  to  prevent  the  issuing  of 
any  patent  to  another  for  the  same  invention  until  after  the 
caveator  has  notice  of  the  interfering  application,  and  has 
thus  had  an  opportunity  to  file  an  application  himself,  and  so 
delay  the  issuing  of  a  patent  to  his  competitor  until  interfer- 
ence proceedings  in  the  Patent  Office  shall  have  decided  the 

1  Revised  Statutes,  Section  4918. 


CHAP.   VI.]  APPLICATIONS.  107 

question  of  priority.'  If  an  invention  is  fully  described  in 
a  caveat,  then  that  caveat  will  constitute  evidence  showing 
that  invention  to  have  been  made  at  least  as  early  as  the 
caveat  was  filed.  This,  however,  is  an  incidental  and  not 
a  statutory  function  of  such  a  document,  and  it  cannot  be 
performed  by  any  caveat  which  is  not  complete  enough  in  its 
description  to  enable  a  skilful  mechanic,  without  inventing 
anything  himself,  to  construct  a  specimen  of  the  invention 
to  which  the  caveat  refers.  But  even  where  a  caveat  does 
not  reach  that  standard,  it  constitutes  evidence  that  the 
invention  had  reached  the  stage  of  development  shown  in 
the  caveat,  at  the  time  the  caveat  was  executed.2 

Omission  to  file  a  caveat  does  not  impair  the  ultimate 
rights  of  an  inventor ; 3  and  omission  to  consider  a  caveat 
does  not  invalidate  a  patent  granted  to  another  in  pursuance 
of  the  oversight.4 

§  144.  No  appeal  lies,  in  any  interference  case,  from  the 
Commissioner  of  Patents  to  the  Supreme  Court  of  the  Dis- 
trict of  Columbia.5  The  decision  of  the  Commissioner  in 
any  such  case,  however,  may  be  reviewed  by  means  of  a  bill 
in  equity,  filed  in  any  United  States  Circuit  Court  having 
or  receiving*  jurisdiction  of  the  parties.6  Whether  any 
appeal  lies  to  the  Supreme  Court  of  the  United  States  from 
any  decree  of  any  Circuit  Court,  rendered  in  any  such  case, 
or  in  any  other  case  brought  by  authority  of  the  same 
statute,  is  an  unsettled  question.  Appeals  are  demandable 
from  the  Circuit  Courts  to  the  Supreme  Court  in  all  equity 
cases  "  touching  patent-rights."  '  Such  is  the  provision  of 
the  Revised  Statutes,  and  such  was  the  provision  of  the 
latent  Act  of  1870."  Prior  to  the  approval  of  the  last-men- 
tioned statute,  such  appeals  were  allowable  in  all  "  cases 

1  Revised  Statutes,  Section  4902;  6  Revised  Statutes,  Section  4911. 
Bell  v.  Daniels.  1  Fisher,  372,  1858.  •  Revised  Statutes,  Section  4915, 

2  Jones  v.  Wetherell,  IMcArthur's  and   Sec.  629,  1  9;  Section   134  of 
Patent  Cases,  413,  1855.  this  book. 

3  Heath  «.  Hildreth,  1  McArthur's  '  Revised  Statutes,  Section  699. 
Patent  Cases,  25,  1841.  •  16  Statutes  at  Large,  Ch.  230, 

4  Cochrane  v.  Waterman,  1   Me-  Section  56,  p.  207. 
Arthur's  Patent  Cases,  59,  1844. 


108  APPLICATIONS.  [CHAP.  vi. 

arising  under  any  law  of  the  United  States,  granting  or  con- 
firming to  inventors  the  exclusive  right  to  their  inventions," 
and  were  demandable  in  a  portion  of  such  cases.1  This  last- 
quoted  phraseology  was  probably  wide  enough  to  cover 
cases  brought  in  the  Circuit  Courts  to  review  adverse 
decisions  of  the  Commissioner  of  Patents,  or  of  the  Supreme 
Court  of  the  District  of  Columbia,  on  applications  for  letters 
patent ;  but  it  does  not  follow  that  the  present  statute  is 
wide  enough  for  that  purpose.  Cases  brought  under  Sec- 
tion 4915  of  the  Revised  Statutes  are  not  cases  "  touching 
patent-rights."  They  are  cases  touching  rejected  applica- 
tions for  patent-rights.  If,  therefore,  they  are  held  to  be 
appealable  to  the  Supreme  Court,  they  must  be  so  held 
by  virtue  of  a  loose  construction  of  the  statute  regulating 
appeals. 

§  145.  An  application  for  a  patent  may  be  abandoned. 
That  abandonment  may  be  actual,  or  it  may  be  constructive. 
The  facts  which  constitute  an  actual  abandonment  of  an 
application,  may  also  constitute  an  actual  abandonment  of 
the  invention  covered  thereby;  and  a  constructive  abandon- 
ment of  an  application,  may  or  may  not  work  a  constructive 
abandonment  of  the  invention.  » 

Actual  abandonment  of  an  application  does  not  always 
follow  from  the  fact  that  the  applicant  withdrew  it  from  the 
Patent  Office.  If,  when  withdrawing  it,  he  intended  to  file  a 
new  application  for  the  same  invention,  and  accordingly 
does  so,  the  two  are  hold  to  constitute  one  continuous 
application  within  the  meaning  of  the  law.4  This  doctrine 
applies,  even  if  the  new  application  is  not  filed  till  long 
after  the  old  one  was  withdrawn,  provided  there  was  no 
laches  chargeable  to  the  applicant  on  account  of  the  delay.3 

Nor  does  actual  abandonment  of  an  application  neces- 
sarily follow  from  the  fact  that  it  was  rejected  by  the  Patent 
Office,  and  then  allowed  to  lie  dormant  by  the  applicant. 

1  5  Statutes  at  Large,    Ch.    357,  v.   Richmond,    30    Fed.    Rep.    779, 
Section  17,  p.  124.  1886. 

2  Godfrey  v.   Eames,  1  Wallace,          8  Howes  v.  McNeal,    3  Bann.  & 
317,  1863;  International  Crown  Co.  Ard.  376,  1878. 


CHAP.  VI.]  APPLICATIONS.  109 

If,  in  such  a  case,  the  applicant  always  expected  to  secure  a 
patent,  either  on  the  original  application  or  on  another,  and 
if,  without  laches,  he  made  and  prosecuted  another  applica- 
tion for  the  same  invention,  and  secured  a  patent  thereon, 
the  two  applications  are  considered,  in  the  eye  of  the  law,  to 
be  one.1 

Laches,  if  it  intervenes  between  a  withdrawn  or  rejected 
application  and  a  new  application  covering  the  same  inven- 
tion, will,  however,  be  fatal  to  any  claim  of  continuity."  It 
will  constitute  evidence  that  the  first  application  was  actually 
abandoned,  and  equally  good  evidence  of  the  actual  aban- 
donment of  the  invention  itself.* 

§  146.  Constructive  abandonment  of  an  application  occurs 
whenever  two  years  intervene  between  the  filing  of  the 
application  and  its  being  made  complete  enough  to  entitle 
it  to  examination,  according  to  the  rules  of  the  Patent 
Office  ;  and  such  an  abandonment  also  occurs  if  the  applicant 
allows  two  years  to  pass  without  regularly  prosecuting  his 
application  after  any  particular  action  is  taken  thereon  by 
the  Patent  Office,  and  notified  to  him,  provided,  in  either 
case,  the  Commissioner  of  Parents  is  not  convinced  that  the 
delay  was  unavoidable.4  If  he  is  so  convinced,  he  may  con- 
done the  delay  by  granting  a  patent ;  and  if  he  grants  a 
patent,  his  decision  on  the  point  is  conclusive.6 

All  applications,  also,  which  were  rejected  or  withdrawn 
prior  to  July  8,  1870,  and  not  revived  within  six  months 
after  that  day,  were  thereby  constructively  abandoned.* 
The  statutory  provision  just  cited,  did  not  operate  to  renew 
any  right  to  any  abandoned  invention.7  Nor  did  it  fix  any 

'•  Smith  77.  Dental  Vulcanite  Co.  101  U.  S.  484,  1879. 

93  U.  S.  500,  1876;  Blandy  t>.  Grif-  *  Revised  Statutes,  Section  4894, 

fith,  3  Fisher,  617,  1869;  Graham  v.  Kirk  v.  Commissioner  of  Patents, 

McCormick,  5  Bann.  &  Ard.  244,  37  Off.  Gaz.  451,  1885. 

1880;  Ligowski  Clay  Pigeon  Co.  v.  *  M'Millin  v.  Barclay,  5  Fisher, 

Clay  Bird  Co.  34  Fed.  Rep.  334, 1887.  199,  1871. 

1  Bevin  v.  Bell  Co.  9  Blatch.  61,  •  16  Statutes  at  Large,   Ch.  230, 

1871;  Weston  «.  White,  13  Blatch.  Section  35,  p.  202. 

452,  1876.  *  Planing  Machine  Co.  «.  Keith, 

*  Planing  Machine  Co.  v.  Keith,  101  U.  S.  483,  1879. 


110  APPLICATIONS.  [CHAP.  vi. 

time  after  which  any  invention  should  be  held  to  be  aban- 
doned, for  it  provided  no  result  from  six  months'  delay, 
except  that  the  application  should  be  held  to  have  been 
abandoned. 

So,  also,  constructive  abandonment  of  his  application 
occurs  when  any  applicant  fails  to  pay  the  final  fee  within 
six  months  from  the  time  at  which  a  patent  is  allowed,  and 
notice  of  such  allowance  is  sent  to  him  or  to  his  agent.1 
The  six  months  referred  to  in  this  paragraph  are  lunar,  and 
not  calendar,  months.8 

§  147.  Constructive  abandonment  of  an  application  will 
work  constructive  abandonment  of  the  invention  covered 
thereby,  where  the  abandonment  of  the  application  arose 
from  either  of  the  causes  stated  in  the  first  paragraph  of 
the  last  preceding  section,  if  no  new  application  is  filed  soon 
enough  to  independently  avoid  the  statute  relevant  to 
public  use  or  sale  more  than  two  years  before  application 
for  a  patent.3  The  same  thing  is  true,  for  the  same  reason, 
where  the  abandonment  of  the  application  arose  from  the 
cause  stated  in  the  second  paragraph  of  the  last  preceding 
section.  But  the  same  reason,  does  not  exist  relevant  to  the 
cause  of  constructive  abandonment  stated  in  the  third  para- 
graph of  that  section.  If,  therefore,  an  applicant  fails  to 
pay  the  final  fee  within  six  months  after  an  allowance  of  a 
patent  to  him,  and. if  he  files  a  new  application  for  a  patent, 
on  the  same  invention,  within  two  years  after  that  allowance, 
but  more  than  two  years  after  that  invention  was  first  in 
public  use  or  on  sale,  the  question  arises  whether  the  con- 
structive abandonment  of  the  first  application  will  prevent 
the  two  applications  from  being  regarded  as  one,  on  the 
principles  stated  in  the  second  and  third  paragraphs  of 
Section  145  in  this  chapter.  No  answer  to  that  question  is 
found  in  any  adjudicated  case  ;  and  as  the  point  is  unlikely 
to  arise,  and  as  its  solution  involves  much  argument,  no 
answer  is  attempted  in  this  book. 

But  in  every  case  where  a  new  application  is  made  with- 

1  Revised  Statutes,  Section  4885.  z  Lindsay  v.  Stein,  10  Fed.  Rep. 

*  Section  125  of  this  book.  913,  1882. 


CHAP.  VI.]  APPLICATIONS.  Ill 

in  two  years  after  the  invention  was  first  in  public  use  or 
on  sale,  a  patent,  if  granted  on  that  new  application,  will 
not  be  unfavorably  affected  by  the  fact  that  a  former  ap- 
plication was  made,  and  was  constructively  abandoned. 

§  148.  Patents  are  authorized  by  law,  only  on  compliance 
with  the  statutory  prerequisites  to  their  issue.  The  Com- 
missioner has  therefore  no  jurisdiction  to  grant  any  patent, 
except  where  all  those  prerequisites  have  been  substantial- 
ly performed.  If  he  inadvertently  grants  a  patent  in  any 
other  case,  he  exceeds  his  jurisdiction,  and  it  is  therefore 
open  to  every  person  who  is  sued  as  an  infringer  of  that  pat- 
ent, to  successfully  defend  against  such  an  action,  by  plead- 
ing and  proving  the  particular  fault  or  omission  with  which 
the  applicant  was  chargeable.1  In  all  cases,  however,  where 
the  application  was  complete  enough  to  give  the  Commis- 
sioner jurisdiction,  the  patents  will  be  unaffected  by  evi- 
dence that  the  Commissioner  was  improvident  or  injudicious 
in  the  exercise  of  his  discretionary  powers  over  these  ap- 
plications. If,  for  example,  he  omits  to  require  that  speci- 
mens of  the  ingredients  shall  be  furnished,  with  a  particular 
application  for  a  patent  for  a  composition  of  matter,  it  is 
not  open  to  any  infringer  to  show  that  the  public  interest 
would  have  been  better  subserved  had  such  a  requirement 
been  made.4  The  same  rule  also  governs  the  same  point  in 
cases  where  the  Commissioner  omits  to  require  a  model.3 
But  it  is  probably  open  to  any  defendant  to  defeat  a  recov- 
ery for  infringement,  by  pleading  and  proving  that  no  draw- 
ing of  the  invention  was  filed  in  the  Patent  Office,  and  that 
the  nature  of  the  case  admitted  of  drawings.  This  must  be 
the  law,  unless  the  Commissioner  is  the  sole  and  final 
judge  of  this  last  point  of  fact ;  and  it  is  not  probable  that 
Congress  intended  to  make  him  so,  for  no  such  intention  is 
expressed  in  the  statute,4  and  no  such  intention  is  consist- 
ent with  public  policy. 

1  Grant   «.    Raymond,  6  Peters,  *  Tarr  v.  Folsom,  1  Bann.  &  Ard. 

218, 1832;  Parks  v.  Booth,  102  U.  S.  24,  1874. 

101,  1880;  Ransom  v.  New  York,  1  s  Revised  Statutes,  Section  4891. 

Fisher,  257,  1856.  4  Revised   Statutes,  Section  4889 


CHAPTEE  YII. 


LETTERS    PATENT. 


149.  No  exclusive  right    to  inven- 
tions, at  common  law. 

150.  Constitutional  exclusive  right 
to  inventions    in    the     United 
States. 

151.  Patents  are  property. 

152.  Dignity  of    property    in  pat- 
ents. 

153.  Patents  are  not  odious  monopo- 
lies. 

154.  Patent  rights  are  absolute,  not 
qualified. 

155.  Patent  rights  are  beyond  State 
interference. 

156.  Patent  rights  are  not  subject  to 
common    law    executions,   but 
may  be  subjected   to  creditors' 
bills  in  equity. 

157.  Patent  rights  are  as  exclusive 
of  the  government,  as  they  are 
of  any  citizen. 

158.  Patents  do  not  cover  specimens 
purchased  of  the  inventor,  or 
made  with  his  knowledge  and 
consent,       before      application 
therefor. 

159.  The  foregoing  rule  has  no  ap- 
plication to  patents  for  process- 
es. 

160.  Territorial    scope    of    United 
States  patents. 

161.  Operation    of    United    States 
patents  on  the  decks  of  ships. 

162.  Duration  of  patents. 

163.  Duration  of  United  States  pat- 
ents for  inventions  first  patent- 


ed in  a  foreign  country,  accord- 
ing to  the  statute  of  1870. 

164.  Duration  of  United  States  pat- 
ents for  inventions  first  patent- 
ed in  a  foreign  country,  accord- 
ing to  the  statute  of  1839. 

165.  Duration  of  United  States  pat- 
ents for  inventions  first  patent- 
ed in  a  foreign  country  accord- 
ing to  the  statute  of  1861. 

170.  Beginning    of    the    terms  of 
United  States  patents. 

171.  To   whom    letters    patent  are 
granted  by  the  government. 

172.  Letters  patent  as  documents. 

173.  The  specification. 

174.  The  description. 

175.  The  description. 

176.  The  claim  or  claims. 

177.  The  claim  or  claims. 

178.  Particularity    in     descriptions 
and  claims,  are  conditions  pre- 
cedent to  validity. 

179.  Questions  of  sufficiency  of  par- 
ticularity of    descriptions    and 
claims,  are  questions  of  fact,  and 
not  of  law. 

180.  Plurality  of    inventions    in    a 
single  letters  patent. 

181.  Construction  of  letters  patent. 

182.  Claims  to  be  construed  in  the 
light  of  descriptions. 

183.  Construction     of      functional 
claims. 

184.  Claims  construed  in  the  light 
of  the  state  of  the  art. 

112 


tion. 


CHAP.   VII.]  LETTERS    PATENT.  113 

185.  Proper  liberality  of  construe-  ;  189.  Questions  of  construction  are 

questions  of  law, and  not  of  fact. 

190.  Letters  patent  presumed  to  be 
for  same  invention  as  the  ap- 
plication therefor. 

191.  Letters  patent  are  constructive 
notice  of  their  contents  to  every 
person. 


186.  Proper  strictness  of  construc- 


tion. 


187.  Construction    in  the  light    of 
contemporaneous      understand- 
ing of  the  inventor. 

188.  Construction   in   the  light    of 


contemporaneous  statutes. 

§  149.  No  inventor  has  any  special  right  to  his  invention 
at  common  law.1  This  is  not  a  virtue  in  that  law.  It  is  an 
imperfection ;  an  omission.  That  omission  is  due  to  the 
fact  that  the  common  law  came  into  being  in  the  middle 
ages,  and  in  England.  New  and  useful  inventions  were 
seldom  produced  in  those  ages,  and  most  of  those  which 
were  produced,  were  produced  in  Italy  or  on  the  continent 
of  Europe.  There  was  little  or  no  occasion  or  opportunity 
in  England,  for  the  creation  or  recognition  of  any  exclusive, 
or  otherwise  paramount,  customary  right  in  inventions. 
Even  in  those  countries  where  new  and  useful  things  were 
more  frequently  invented,  their  inventors  were  oftener  per- 
secuted as  heretics  than  rewarded  as  benefactors.  Des- 
potic kings  were  wont,  in  many  countries,  to  confer  monop- 
olies upon  their  favorites,  regardless  of  any  meritorious 
right  to  the  things  monopolized  ;  and  it  sometimes  hap- 
pened, in  England  and  elsewhere,  that,  in  pursuance  of  this 
practice,  a  monopoly  of  an  invention  was  granted  to  its 
true  inventor.  Such  a  grant,  however,  was  always  a  mat- 
ter of  kingly  grace,  and  never  a  matter  of  legal  right.  Ih 
the  reign  of  James  the  First,  the  English  parliament 
limited  this  exercise  of  royal  prerogative  to  cases  of  inven- 
tions, and  thus  laid  the  foundation  of  the  patent  laws  of 
England.  The  limiting  statute  did  not  purport  to  confer 
upon  inventors,  any  inchoate  right  which  they  might  per- 
fect and  make  absolute  by  proceeding  in  any  manner 
pointed  out  by  law.  It  recognized  the  power  of  the  king 

1  Brown  t>.  Duchesne,  19  Howard,  Machine  Co.  4  Fisher,  294,1870; 
195,  1856  ;  American  Hide  and  Rein  «.  Clayton,  37  Fed.  Rep.  356, 
Leather  Splitting  Machine  Co.  v.  1889. 


114  LETTERS  PATENT.  [CHAP.  VII. 

to  secure  to  any  inventor  an  exclusive  right  to  his  inven- 
tion, if  his  royal  pleasure  prompted  him  so  to  do.  But  the 
exercise  of  that  power  was  so  infrequent  for  more  than  a 
century,  that  Blackstone,  in  his  Commentaries  on  the  Laws 
of  England,  devoted  but  one  sentence  to  the  branch  per- 
taining to  patents  for  inventions. 

§  150.  In  the  United  States  of  America,  the  superior 
right  of  an  inventor  to  his  invention  has  a  far  better  foun- 
dation than  could  be  furnished  by  the  prerogative  of  any 
king.  That  foundation  is  the  consent  of  the  people  of  the 
United  States  :  a  consent  primarily  expressed  in  the  Fed- 
eral Constitution,  and  elaborately  denned  in  the  federal 
statutes.  The  Constitution  was  established  as  the  supreme 
law  of  the  United  States,  on  the  twenty-first  day  of  June, 
1788.  It  conferred  power  upon  Congress  to  promote  the 
progress  of  the  useful  arts,  by  securing,  for  limited  times, 
to  inventors,  the  exclusive  right  to  their  respective  inven- 
tions.1 In  exercise  of  that  power,  Congress,  on  the  tenth 
day  of  April,  1790,  enacted  the  first  federal  statute  on  the 
subject ;  and  provided  therein  that  the  exclusive  right  in 
contemplation,  should  be  secured  to  the  respective  inven- 
tors, by  means  of  a  written  grant  from  the  United  States,  to 
be  named  letters  patent.5  It  is  the  office  of  this  chapter  to 
explain  the  nature,  the  extent,  and  the  duration  of  the 
right  secured  by  such  a  document ;  to  outline  the  general 
form  and  necessary  characteristics  of  such  a  document 
itself  ;  and  to  set  forth  the  rules  by  which  such  documents 
are  properly  construed. 

§  151.  Patent  rights  are  property.3  Therefore  their  own- 
ers cannot  be  constitutionally  deprived  of  those  rights, 
without  due  process  of  law.4  Due  process  of  law  includes 


1  Article  1,  Section  8.  96;  1876  ;  Cammeyer  v.  Newton,  94 

2  1   Statutes  at  Large,   Ch.  7,  p  U.  S.  226, 1876;  James  ®.  Campbell, 
109.  104  U.    S.     357,    1881  ;     Marsh   r. 

8  Brown  v.  Duchesne,  19  Howard,  Nichols,  128  U.  S.  612,  1888. 

195,  1856;  Seymour  v.  Osborne,  11  4  Fifth  Amendment  to  the  Consti- 

Wallace,    533,  1870;     Consolidated  tution. 
Fruit  Jar  Co.   v.  Wxight,  94  U.  S. 


CHAP.  VII.]  LETTERS   PATENT.  115 

the  constitutional  judgments  and  decrees  of  courts  ;  but  it 
does  not  include  any  act  of  Congress,  or  of  any  other  legis- 
lature.1 Patent  rights,  once  vested,  are  therefore  incapable 
of  being  divested  by  act  of  Congress.*  Nor  can  Congress 
do  indirectly,  that  which  it  is  forbidden  to  do  with  direct- 
ness. It  cannot  destroy  nor  seriously  impair  the  value  of  a 
patent  right,  under  the  guise  of  altering  or  repealing  the 
existing  remedies  applicable  to  its  enforcement,  any  more 
than  it  can  so  treat  any  other  kind  of  property.1 

§  152.  The  right  of  property  which  an  inventor  has  in  his 
invention,  is  excelled,  in  point  of  dignity,  by  no  other  prop- 
erty right  whatever.  It  is  equalled,  in  point  of  dignity,  only 
by  the  rights  which  authors  have  in  their  copyrighted 
books.  The  inventor  is  not  the  pampered  favorite  or  bene- 
ficiary of  the  government,  or  of  the  nation.  The  benefits 
which  he  confers,  are  greater  than  those  which  he  receives. 
He  does  not  cringe  at  the  feet  of  power,  nor  secure  from 
authority  an  unbought  privilege.  He  walks  everywhere 
erect,  and  scatters  abroad  the  knowledge  which  he  created. 
He  confers  upon  mankind  a  new  means  of  lessening  toil,  or 
of  increasing  comfort ;  and  what  he  gives  cannot  be  de- 
stroyed by  use,  nor  lost  by  misfortune.  It  is  henceforth  an 
indestructible  heritage  of  posterity.  On  the  other  hand,  he 
receives  from  the  government,  nothing  which  costs  the  gov- 
ernment or  the  people  a  dollar  or  a  sacrifice.  He  receives 
nothing  but  a  contract,  which  provides  that  for  a  limited 
time  he  may  exclusively  enjoy  his  own.  Compared  with 
those  who  acquire  property  by  devise  or  inheritance  ;  com- 
pared with  those  who  acquire  property  by  gift  or  marriage; 
compared  with  those  who  acquire  property  by  profits  on 
sales,  or  by  interest  on  money ;  the  man  who  acquires 
:  property  in  inventions,  by  creating  things  unknown  before, 
occupies  a  position  of  superior  dignity.  Even  the  man 

I  Ban-on   v.  Baltimore,  7  Peters,       ard,  202,  1843. 

247,    1833;    Kent's    Commentaries,  3  Green  t>.  Biddle,  8  Wheaton,  75, 

Lecture  24,  p.  13  ;  Taylor  «.  Porter,  1823;  Brouson  r>.  Kinzie,  1  Howard, 

4  Hill  (N.  Y.),  147,  1843.  317,  1843. 

II  McClurg  v.  Kingsland,  1  How- 


116  LETTEES   PATENT.  [CHAP.  VII. 

who  creates  value  by  manual  labor,  though  he  rises  in  dig- 
nity above  the  heir,  the  donee,  the  merchant,  and  the 
money-lender,  falls  in  dignity  below  the  author  and  the  in- 
ventor. The  inventor  of  the  reaper  is  entitled  to  greater 
honor  than  his  father  who  used  the  grain  cradle  ;  and  the 
inventor  of  the  grain  cradle  is  entitled  to  greater  honor 
than  his  ancestors,  who,  for  a  hundred  generations,  had 
used  the  sickle.  Side  by  side  stand  the  inventor  and  the 
author.  Their  labor  is  the  most  dignified  and  the  most 
honorable  of  all  labor  ;  and  the  resulting  property  is  most 
perfectly  theirs. 

Lord  BACON  gave  the  weight  of  his  opinion,  to  views 
somewhat  similar  to  the  foregoing.  The  following  is  a 
translation  of  one  of  his  Latin  paragraphs. 

"  The  introduction  of  great  inventions  appears  one  of  the 
most  distinguished  of  human  actions,  and  the  ancients  so 
considered  it ;  for  they  assigned  divine  honors  to  the  authors 
of  inventions,  but  only  heroic  honors  to  those  who  displayed 
civil  merit ;  such  as  the  founders  of  cities  and  empires,  legis- 
lators, the  deliverers  of  their  country  from  lasting  misfor- 
tunes, the  quellers  of  tyrants  and  the  like.  And  if  any 
one  rightly  compare  them,  he  will  find  the  judgment  of  an- 
tiquity to  be  correct ;  for  the  benefits  derived  from  inven- 
tions may  extend  to  mankind  in  general,  but  civil  benefits  to 
particular  lands  alone ;  the  latter,  moreover,  last  but  for  a 
time,  the  former  forever.  Civil  reformation  seldom  is  car- 
ried on  without  violence  and  confusion,  while  inventions 
are  a  blessing  and  a  benefit  without  injuring  or  afflicting 
any."1 

§  153.  "  Letters  patent  are  not  to  be  regarded  as  monopo- 
lies, created  by  the  executive  authority  at  the  expense  and 
to  the  prejudice  of  all  the  community  except  the  persons 
therein  named  as  patentees,  but  as  public  franchises  granted 
to  inventors  of  new  and  useful  improvements  for  the  pur- 
pose of  securing  to  them,  as  such  inventors,  for  the  limited 
term  therein  mentioned,  the  exclusive  right  and  liberty  to 

1  Novum  Organum,  Book  1,  Section  CXXIX. 


CHAP.  VII.]  LETTERS   PATENT.  117 

make  and  use,  and  vend  to  others  to  be  used,  their  own  in- 
ventions, as  tending  to  promote  the  progress  of  science  and 
the  useful  arts,  and  as  matter  of  compensation  to  the  in- 
ventors for  their  labor,  toil,  and  expense  in  making  the 
inventions,  and  reducing  the  same  to  practice  for  the  public 
benefit,  as  contemplated  by  the  Constitution  and  sanctioned 
by  the  laws  of  Congress."  Such  is  the  accepted  doctrine 
as  formulated  by  Justice  CLIFFORD  when  speaking  for  the 
Supreme  Court.1  The  same  ideas  were  more  concisely 
expressed  in  an  earlier  case  by  Justice  DANIEL.*  Speaking 
of  the  inventor's  exclusive  right,  he  said  :  "  This  was  at 
once  the  equivalent  given  by  the  public  for  benefits  be- 
stowed by  the  genius  and  meditations  and  skill  of  individ- 
uals, and  the  incentive  to  further  efforts  for  the  same 
important  objects."  Writing  an  opinion  of  the  Supreme 
Court,  and  referring  to  the  doctrine  of  patents,  Justice 
MILLER  said :  "  It  is  no  longer  a  scarcely  recognized  prin- 
ciple, struggling  for  a  foothold,  but  it  is  an  organized  sys- 
tem, with  well-settled  rules,  supporting  itself  at  once  by  its 
utility,  and  by  the  wealth  which  it  creates  and  commands."  " 
These  opinions  of  the  Supreme  Court  agree,  therefore,  in 
holding,  with  all  fair  and  thoughtful  men,  that  patent-rights 
are  not  hurtful  monopolies,  but  are  rights  of  property  at 
once  dignified,  honorable,  and  strong. 

§  154.  A  patent-right  is  an  absolute,  and  not  a  qualified, 
right.  During  the  term  of  his  patent,  a  patentee  may,  if  he 
pleases,  decline  to  allow  any  other  person  to  make,  use,  or 
sell  the  invention  which  it  covers,  and  at  the  same  time 
may  refrain  from  making,  using,  and  selling  his  invention 
himself.4  From  July,  1832,  until  July,  1870,  there  was  an 
exception  to  this  rule.  Under  the  statute  of  1790,  aliens, 
as  well  as  citizens,  might  receive  United  States  patents  ;  * 

'  Seymour*.  Osborne,  11  Wallace,  4  Pitts  e.  Wemple,  1  Bissell,  93, 

533,  1870.  1855;  American  Bell  Telephone  Co. 

*  Kendall  t>.  Winsor,  21  Howard,  t>.  Service  Co.  45  OS.   Gaz.  1193, 
322,  1858.  1888. 

*  Merrill  v.  Yeomans,   94  U.   8.  8 1  Statutes  at  Large,  Ch.  7,  Sec- 
573,  1876.  tion  1,  p.  109. 


118  LETTERS   PATENT.  [CHAP.  VII. 

but  the  statute  of  1793  confined  that  privilege  to  citizens 
of  the  United  States.1  The  statute  of  1800  extended  the 
right  to  aliens  who  had  resided  two  years  within  the  United 
States,  and  provided  that  patent-rights  should  be  obtained, 
used,  and  enjoyed  by  such  persons,  in  as  full  and  ample  a 
manner,  and  under  the  same  conditions,  limitations,  and 
restrictions,  as  in  the  case  of  citizens.2  That  continued  to 
be  the  state  of  the  law  on  the  point  till  July  13,  1832  ; 
when  Congress  provided  that  still  another  class  of  aliens 
might  have  patents  :  namely,  aliens  who  were  residents  of 
the  United  States,  and  had  declared  their  intention,  accord- 
ing to  law,  to  become  citizens  thereof.  It  was,  however, 
expressly  provided  that  any  patent,  granted  to  an  alien  of 
this  class,  should  determine  and  become  absolutely  void, 
without  resort  to  any  legal  process  to  annul  or  cancel  the 
same,  in  case  of  failure  on  the  part  of  the  patentee,  for 
the  space  of  one  year  from  the  issuing  thereof,  to  introduce 
into  public  use  in  the  United  States  the  invention  covered 
by  the  patent ;  or  in  case  such  public  use  be  discontinued 
for  any  period  of  six  months ;  or  in  case  of  failure  of  the 
patentee  to  become  a  citizen  of  the  United  States  as  soon 
as  the  law  allowed.3  Four  years  later,  however,  this  statute 
was  repealed  by  that  of  1836.  The  latter  statute  extended 
the  right  to  obtain  United  States  patents  to  all  inventors ; 
but  it  provided  that  an  effectual  defence  to  an  action  for 
infringement  might  be  based  on  the  fact  that  the  patentee, 
if  an  alien  at  the  time  the  patent  was  granted,  had  failed 
and  neglected,  for  the  space  of  eighteen  months  from  the 
date  of  the  patent,  to  put  and  continue  on  sale  to  the  public, 
on  reasonable  terms,  the  invention  for  which  the  patent 
issued.4  But  no  such  qualification  of  any  patent-right  is 
contained  in  the  consolidated  Patent  Act  of  1870, 6  nor  in 


1  1  Statutes  at  Large,  Ch.  11,  Sec-  Section  1,  p.  577. 

tion  1,  p.  318.  4  5  Statutes   at   Large,    Ch.   357, 

*  2  Statutes  at  Large,  Ch.  25,  Sec-  Sections  6  and  15,  pp.  119  and  123. 

tion  1,  p.  37.  5 16  Statutes  at  Large,  Ch.  230, 

:t  4  Statutes   at    Large,    Ch.   203,  Section  61,  p.  208. 


CHAP.  VII.]  LETTERS    PATENT.  119 

the  Revised  Statutes ; '  so  that  the  rule  stated  at  the  head 
of  this  section  applies  to  nearly  all  existing  patents. 

§  155.  No  State  has  any  power  to  make  a  law  interfering 
with  the  sale  of  any  patent- right,2  but  every  State  has  power 
to  regulate  the  making,  the  selling,  and  the  using  of  the 
things  covered  by  any  patent-right,  to  the  same  extent  that 
it  lawfully  regulates  the  making,  selling,  and  using  of  simi- 
lar unpatented  things.  Things  covered  by  patents  are  as 
much  subject  to  the  revenue  laws,3  and  other  public  laws 4  of 
a  State  or  municipality,  as  any  other  things.  A  patent  for 
a  dynamite  powder,  or  for  a  deadly  poison,  or  for  an  explo- 
sive oil,  does  not  oust  nor  affect  the  power  of  local  authori- 
ties to  prescribe  the  place  and  manner  of  the  manufacture, 
storage,  and  sale  of  those  dangerous  substances.  Nor  does 
a  patent  on  a  sewing-machine  exempt  the  patentee  from  any 
State  tax  on  the  machines  he  may  make,  use,  or  sell  within 
the  boundaries  of  that  State.  The  reason  why  a  State  may 
regulate  the  sale  of  a  patented  thing,  and  may  not  regulate 
the  sale  of  the  patent  covering  that  thing,  is  explainable  as 
follows.  A  patentee  has  two  kinds  of  rights  in  his  inven- 
tion. He  has  a  right  to  make,  use,  and  sell  specirnens  of 
the  invented  thing ;  and  he  has  a  right  to  prevent  all  other 
persons  from  doing  either  of  those  acts.  The  first  of  these 
rights  is  wholly  independent  of  the  patent  laws ;  while  the 
second  exists  by  virtue  of  those  laws  alone.6  A  patentee 
therefore  holds  the  first  of  these  rights  subject  to  the  police 
powers,  and  the  taxing  powers,  of  the  State ;  while  the 
second,  being  the  creature  of  the  laws  of  Congress,  is  wholly 
beyond  State  control  or  interference.6 

§  156.  Patent-rights,  being,  as  they  are,  intangible  prop- 


1  Revised  Statutes,  Section  4920.  *  Bloomer  t>.  McQuewan,  14  How- 

*  Exparle  Robinson,  2  Bissell.  313,  ard,  539,  1852;  In  re  Brosnahan,  18 

1870;  Castle  t.  Hutchinson,  25  Fed.  Fed.  Rep.  62, 1883;  United  States  «. 

Rep.  394,  1885.  Bell  Telephone  Co.  29  Fed.  Rep.  48. 

3  Webber  v.  Virginia,  103  U.  S.  1886. 

347,  1880.  •  May  v.  County  of  Buchanan,  29 

4  Patterson  v.  Kentucky,  97  U.  S.  Fed.  Rep.  473,  1886. 
505,  1878. 


120  LETTERS    PATENT.  [CHAP.   VII. 

erty,  cannot  be  seized  and  sold  under  the  authority  of  any 
writ  of  fieri  facias,  or  other  common-law  execution.1  They 
may,  however,  be  reached  by  a  creditor's  bill  in  equity,  and 
thus  be  applied  to  the  payment  of  the  debts  of  the  owners  ; 
the  same  as  trust  property,  choses  in  action,  or  stock  of  a 
debtor  in  a  corporation,  may  be  reached  and  applied.  A 
court  of  equity  may,  in  pursuance  of  its  powers  in  such 
cases,  decree  that  the  debtor  patentee  pay  the  judgment 
upon  which  the  bill  is  based,  or,  in  default  thereof,  that  his 
patent-right  be  sold  under  the  direction  of  the  court,  and 
an  assignment  thereof  be  executed  by  him,  and,  in  default 
of  his  executing  such  an  assignment,  that  some  suitable 
person  be  appointed  trustee  to  execute  the  same  in  his 
place/ 

§  157.  Patent-rights  are  exclusive,  not  only  of  citizens  and 
residents  of  the  United  States,  but  also  of  the  government 
itself,  and  of  its  agents.  The  government  has  no  more  right 
than  any  private  citizen,  to  make,  use,  or  sell  a  patented  in- 
vention, without  the  license  of  the  patentee.3  When  the 
government  grants  letters  patent  for  an  invention,  it  confers 
upon  the  patentee  an  exclusive  property  therein,  which  can- 
not be  appropriated  or  used  by  the  government  itself,  with- 
out just  compensation,  any  more  than  land  which  has  been 
patented  to  a  private  purchaser  can,  without  compensation, 
be  appropriated  or  used  by  the  government.4 

§  158.  No  patent-right  covers  any  use  or  sale  of  any  speci- 
men of  the  patented  thing,  which  was  purchased  of  the  in- 
ventor, or  made  by  another  with  his  knowledge  and  consent, 
before  his  application  for  a  patent  therefor.5  Where  an- 
other than  the  inventor,  surreptitiously  obtains  knowledge 

1  Stephens  v.  Cady,  14  Howard,  1879. 

528,  1852 ;  Stevens  v.  Gladding,  17  4  James  «.   Campbell,  104  U.   S. 

Howard,  447,  1854.  356,  1881 ;  United  States  v.  Palmer, 

*  Ager  c.  Murray,  105  U.  S.  126,  128  U.  S.  271,  1888. 

1881.  5  Revised  Statutes,  Section  4899  ; 

3  United  States  «.  Burns,  12  Wai-  Wade  v.   Metcalf,    129  U.   S.   202, 

lace,  252,  1870 ;  Cammeyer  v.  New-  1889 ;  Duffy  v.   Reynolds,  24  Fed. 

ton,  94  U.  S.  234,  1876  ;  McKeever  Rep.  858,  1885. 
«.  United  States,  23  Off.  Gaz.  1527, 


'HAP.  VII.]  LETTERS   PATENT.  121 

of  an  invention,  and,  without  the  consent  of  the  inventor, 
makes  a  specimen  of  the  invented  thing  before  any  patent 
thereon  is  applied  for,  that  specimen  is  covered  by  a  patent 
for  that  invention,  as  truly  and  as  fully  as  it  would  be  if  it 
had  been  made  by  an  infringer  after  the  date  of  that  patent. 
Such  a  case  is  clearly  outside  of  the  rule  just  stated,  and  of 
the  statute  upon  which  that  rule  is  based.  Indeed  Justice 
STORY,'  and  afterward  the  full  Supreme  Court,2  held  such  a 
case  to  be  outside  the  corresponding  provision  of  the  Patent 
Act  of  1839,3  though  that  provision  did  not  literally  exclude 
such  a  case. 

Where  another  than  the  first  inventor,  re-invents  and  con- 
structs a  specimen  of  an  invention,  before  any  patent  is  ap- 
plied for  thereon,  and  does  so  without  any  knowledge  of  the 
inventor,  or  of  his  doings,  and  without  the  knowledge  or 
consent  of  the  inventor  himself,  he  cannot  invoke  the  rule 
stated  at  the  beginning  of  this  section ;  because  knowledge 
and  consent  of  the  inventor  is  an  express  element  in  the 
statute  which  supports  that  rule.  If,  however,  such  a  re- 
invention and  such  a  construction  occurred  before  July  8, 
1870,  the  thing  so  constructed  is  outside  of  any  patent  after- 
ward applied  for,  because  the  Patent  Act  of  1839  can  be  in- 
voked in  its  behalf,  and  because  the  corresponding  provision 
of  that  act  was  not  limited  to  cases  where  the  inventor  had 
knowledge  and  gave  consent.  Where  such  a  re-invention 
and  construction  occurred  after  July  8,  1870,  it  is  probable 
that  the  specific  thing,  so  constructed,  is  taken  out  of  the 
operation  of  a  patent  afterward  applied  for,  by  the  direct 
action  of  the  fifth  amendment  to  the  Constitution  of  the 
United  States.  That  amendment  provides  that  no  person 
shall  be  deprived  of  property  without  due  process  of  law. 
Things  independently  re-invented  and  innocently  made,  be- 
fore the  first  inventor  applied  for  a  patent  thereon,  are  the 
lawful  property  of  him  who  thus  made  them.  To  deprive 


1  Piereon  t>.   Screw  Co.  3  Story,      326,  1858. 

402,  1844.  *  5  Statutes  at  Large,  Ch.  88,  Sec- 

*  Kendall  v.  Winsor,  21  Howard,      tion  7,  p.  354. 


122  LETTERS   PATENT.  [CHAP.   VII. 

him  of  the  right  to  use  and  to  sell  those  things,  would  be  to 
lessen  or  to  destroy  their  value,  and  thus  to  deprive  him  of 
property  rights.  If  such  an  act  is  ever  done  at  the  suit  of 
the  first  inventor,  after  he  gets  his  patent,  it  will  be  done  by 
virtue  of  that  patent.  Now,  a  patent  is  the  creature  of  a 
statute.  No  statute  is  "  due  process  of  law," '  and  no  patent 
can  be  "  due  process  of  law"  unless  a  creature  can  be  greater 
than  its  creator :  unless  a  statute  can  authorize  a  contract  to 
accomplish,  upon  the  rights  of  third  parties,  a  result  which 
the  statute  itself  is  forbidden  to  accomplish.  If  this  reason- 
ing, and  this  conclusion,  is  correct,  it  will  not  follow  there- 
from, that  such  a  re-inventor  may  construct  any  specimen 
of  the  invention  after  the  first  inventor  has  obtained  a  patent 
thereon.  To  deprive  a  re-inventor  of  such  a  privilege,  is 
not  to  deprive  him  of  property,  for  no  re-inventor  has  any 
property  right  in  an  invention  which  he  was  the  second  in 
the  United  States  to  make,  any  more  than  he  would  have 
if  he  had  learned  of  that  invention  from  a  newspaper  or 
from  a  book. 

§  159.  The  rule  stated  at  the  head  of  the  last  section  does 
not  apply  to  any  process  patent.  The  provision  of  1870," 
and  Section  4899  of  the  Eevised  Statutes,  treat  only  of 
machines  or  other  patentable  articles,  and  confer  exemption 
from  the  operation  of  patents  upon  nothing  but  specific 
things.  Now,  a  process  is  neither  an  article  nor  a  thing.  It 
is  a  series  of  acts.  It  is  therefore  outside  the  language  of 
the  law  en  this  subject.  It  is  also  outside  the  reason  of 
that  law.  That  reason  is  as  follows.  Where  another  than 
the  first  inventor  of  a  particular  tangible  thing,  buys  from 
the  inventor  a  specimen  of  that  thing,  or  makes  such  a 
specimen  with  his  consent,  or  re-invents  and  makes  such  a 
specimen  independently  of  the  first  inventor,  that  specimen 
ought  to  be  exempt  from  any  patent  afterward  applied  for 
by  the  first  inventor ;  because,  if  it  is  not  so  exempt,  it  will 


1  Barren  v.  Baltimore,  7  Peters,          8 16  Statutes  at  Large,  Ch.  230, 
247,  1833 ;  Taylor  ».  Porter,  4  Hill      Section  37,  p.  203. 
(N.  Y.)  147,  1843. 


CHAP.  VII.]  LETTERS    PATENT.  123 

become  worthless  in  the  hands  of  one  who  honestly  ex- 
pended of  his  substance  to  procure  it,  and  who  procured  it 
without  violating  any  patent  or  any  law.  Processes  are  not 
subjects  of  these  considerations.  A  process  cannot  be 
purchased.  The  right  to  practise  a  patented  process  can 
indeed  be  purchased;  but  the  right  to  practise  an  un- 
patented  process,  while  it  remains  unpatented,  cannot  be 
the  subject  of  a  sale,  because  that  right  belongs  to  every 
one  without  any  purchase.  So  also,  if  an  inventor  of  a 
process  consents  that  another  person  may  practise  that 
process,  before  the  inventor  applies  for  a  patent,  that  fact 
furnishes  no  reason  why  that  person  should  be  allowed  to 
practise  that  process,  against  the  will  of  that  inventor,  after 
the  date,  of  his  patent.  To  deprive  such  a  person  of  such  a 
privilege,  is  not  to  deprive  him  of  the  use  of  a  thing.  It  is 
only  to  deprive  him  of  the  privilege  of  repeating  a  series  of 
acts.  These  considerations  apply  also  to  cases  where  a  re- 
inventor  produces  and  practises  a  process,  after  its  produc- 
tion by  the  first  inventor,  and  before  any  application  is 
made  for  a  patent  thereon,  and  without  any  knowledge  of 
the  first  inventor  or  his  doings.  Such  a  re-inventor  has  no 
more  natural  right  to  practise  that  process,  after  a  patent  is 
granted  to  the  first  inventor,  than  any  other  person  has. 
He  has  no  such  right  growing  out  of  the  fact  that  he  was  a 
re-inventor,  because  the  patent  laws  do  not  reward  re-in- 
ventors, and  because  patents  to  first  inventors  are  exclusive 
of  re-inventors,  as  well  as  of  other  persons.  He  has  no  such 
right  growing  out  of  rights  of  property,  because  to  deprive 
him  of  the  privilege  of  repeating  the  process  is  not  to  de- 
prive him  of  the  use  of  any  tangible  property,  and  because 
he  has  no  intangible  property  in  the  process  itself. 

The  language  of  the  Patent  Act  of  1839 '  was,  however, 
different  from  that  of  the  Act  of  1870,  and  of  the  Revised 
Statutes,  on  the  point  treated  in  this  section.  The  earlier 
Act  contained  a  considerable  clause  which  is  not  in  either 
of  the  others,  and  which  induced  the  Supreme  .Court  to 

1  5  Statutes  at  Large,  Ch.  88,  Section  7,  p.  354. 


124  LETTERS    PATENT.  [CHAP.   VII. 

decide  that  the  earlier  statute  applied  to  patents  for  pro- 
cesses, as  well  as  to  patents  for  things.1  The  reasoning  of 
Justice  BALDWIN,  in  the  case,  was  never  convincing  to  the 
present  text-writer.  It  was  spoken  of  by  Justice  STOEY  as 
"  certainly  general ;" 2  and  Judge  WHEELER  has  well  said 
that  "  It  is  not  probable  that  McClurg  v.  Kingsland  would  be 
followed  beyond  cases  of  its  class,  upon  the  same  statute."  3 
As  far  as  McClurg  v.  Kingsland  construed  the  Act  of  1839, 
and  applied  that  Act  to  the  very  case  then  at  bar,  it  is 
entitled  to  loyal  respect  and  obedience,  even  from  those 
who  cannot  follow  its  reasoning.  But  McClurg  v.  Kings- 
land  is  no  guide  to  the  meaning  of  the  present  statute  on 
the  subject,  because  that  statute  is  substantially  different 
from  the  one  construed  in  that  case,  and  because  the  rea- 
soning of  that  case  has  no  convincing  force  when  applied 
to  the  language  of  the  now  existing  statute. 

§  160.  Every  United  States  patent  is  in  general  coexten- 
sive, in  point  of  the  territory  it  covers,  with  the  territory 
covered  by  the  jurisdiction  of  the  United  States.4  Every 
such  patent,  therefore,  covers  the  use  of  the  patented  thing 
in  or  under  the  tide-waters  of  the  United  States  ;  and  that, 
too,  even  in  cases  where  the  government  has  granted,  to 
others  than  the  patentee,  the  exclusive  right  to  do,  at  a 
particular  place,  the  particular  thing  which  the  patented 
invention  is  adapted  to  accomplish.5  In  the  case  just  cited, 
the  complainant  had  a  patent  on  a  certain  submarine  tele- 
graph cable  ;  and  the  defendant  had  a  grant  from  Congress, 
giving  it  the  sole  right,  for  fourteen  years,  to  lay,  construct, 
land,  maintain,  and  operate  telegraphic  cables  in  and  over 
the  waters,  reefs,  islands,  shores,  and  lands  over  which  the 
United  States  have  jurisdiction,  from  the  shores  of  Florida 
to  the  island  of  Cuba.  Under  these  circumstances,  Justice 
BLATCHFORD  decided  that  the  defendant  acquired,  by  its 

1  McClurg  r>.  Kingsland,  1  How-      &  Ard.  547,  1880. 

ard,  202,  1843.  4  Revised  Statutes,  Section  4884. 

2  Pierson  v.   Screw  Co.   3  Story,          5  Colgate  v.  Ocean  Telegraph  Co. 
408,  1844.  17  Blatch.  310,  1879. 

*  Brickill  v.  New  York,  5  Bann. 


CHAP.  VII.]  LETTERS    PATENT.  125 

grant,  no  right  to  use  the  patented  cables  of  the  complain- 
ant ;  and  he  intimated  that  the  complainant  acquired  by  his 
patent  no  right  to  use  his  cables  between  Florida  and  Cuba. 
His  Honor  supported  this  intimation  by  saying  that  no 
patent  confers  upon  its  owner  any  light  to  make  or  use  his 
invention  in  the  house  of  another ;  and  he  supported  his 
decision  by  saying  that  the  fact  just  mentioned  does  not 
confer  upon  another  than  the  patentee  any  right  to  make 
or  use  the  invention  of  the  latter  in  the  house  of  the  former. 

§  161.  No  United  States  patent-right  extends  to  the  mere 
use  of  the  patented  invention  on  any  foreign  ship  while 
temporarily  in  a  harbor  of  the  United  States  for  the  pur- 
poses of  commerce  ;  though  such  a  right  would  be  infringed 
by  making  or  selling  the  patented  article  on  board  any  for- 
eign vessel  while  in  either  of  our  ports.1  United  States 
patent-rights  extend  to  the  decks  of  United  States  ships, 
even  when  those  ships  are  on  the  high  seas,  as  fully  as  they 
extend  to  the  solid  earth  of  the  United  States.* 

§  162.  The  regular  duration  of  a  United  States  patent  for 
a  process,  machine,  manufacture,  or  composition  of  matter, 
was  fourteen  years,  under  the  statutes  prior  to  that  of  1861 ; 
but  it  was  enacted,  in  Section  16  of  the  Patent  Act  of  March 
2  of  that  year,  that  all  patents  thereafter  granted  should 
remain  in  force  for  seventeen  years  from  the  date  of  issue.* 
Section  22  of  the  Consolidated  Patent  Act  of  1870  provided 
that  every  patent  should  grant  to  the  patentee,  his  heirs  or 
assigns,  for  the  term  of  seventeen  years,  the  exclusive  right 
to  make,  use,  and  vend  the  invention  covered  thereby.4 
Section  4884  of  the  Revised  Statutes  makes  the  same  pro- 
vision as  that  made  on  this  point  by  the  Act  of  1870.  The 
phrase  "  every  patent  "  is  not  to  be  understood  in  its  literal 
signification.  It  means  every  patent,  the  duration  of  which 
is  not  otherwise  prescribed  by  statute.  In  the  latter  cate- 
gory, design  patents  fall.  Such  patents  are  grantable 

1  Brown  t>.  Duchesne,  19  Howard,  *  12  Statutes  at  Large,  Ch.  88,  8ec- 

196.  1856.  tion  16,  p.  249. 

»  Gardiner  t>.  Howe,  2  Cliff.  464,  «  16  Statutes  at  Large,  Ch.  230, 

1865.  Section  22,  p.  201. 


126  LETTERS    PATENT.  [CHAP.  VII. 

for  fourteen  years,  or  for  seven  years,  or  for  three  years 
and  six  months,  as  the  applicant  may  in  his  application 
elect.1  In  the  same  category,  also,  fall  patents  for  inven- 
tions for  which  their  owners  previously  obtained  one  or 
more  foreign  patents.  United  States  patents  of  this  class 
cannot  be  granted  for  more  than  seventeen  years,  and  they 
generally  have  to  be  limited  to  some  shorter  length  of  time. 

§  163.  "  Every  patent  granted  for  an  invention  which  has 
previously  been  patented  in  a  foreign  country,  shall  be  so 
limited  as  to  expire  at  the  same  time  with  the  foreign  pat- 
ent, or,  if  there  be  more  than  one,  at  the  same  time  with 
the  one  having  the  shortest  term,  and  in  no  case  shall  it  be 
in  force  more  than  seventeen  years." "  Such  is  the  present 
statute  on  this  subject,  and  the  corresponding  provision  of 
the  Patent  Act  of  1870  was  substantially  the  same.3 

These  enactments  apply  only  to  cases  wherein  the  for- 
eign patent  was  taken  out  by  the  United  States  patentee,  or 
at  least  with  his  knowledge  and  consent.  No  foreign  pat- 
ent obtained  by  another,  without  that  knowledge  and  that 
consent,  after  the  inventor  made  his  invention,  and  before 
the  United  States  patent  was  granted,  can  operate  to  limit 
the  duration  of  the  latter.4 

These  enactments  apply  to  a  case  where  a  foreign  patent 
was  granted  before  the  granting  of  the  corresponding  United 
States  patent,  even  if  the  foreign  patent  was  made  a  secret 
one  at  the  request  of  the  applicant  therefor ; 5  but  they  do 
not  apply  to  a  case  where  a  foreign  patent  was  dated  before 
the  granting  of  the  corresponding  United  States  patent,  but 
not  sealed  nor  published  till  afterward ; 8  though  they  do 
apply  to  a  case  where  the  United  States  patent  was  granted 
after  the  foreign  patent  was  sealed,  upon  an  application 
filed  before  that  event.7 

1  Revised  Statutes,  Section  4931.  trie  Co.  17  Fed.  Rep.  838,  1883. 

8  Revised  Statutes,  Section  4887.  6  Gold  &  Stock  Telegraph  Co.  v. 

3 16  Statutes  at  Large,  Ch.  230,  Telegram  Co.  23  Fed.  Rep.  340, 

Section  25,  p.  201.  1885;  Emerson  v.  Lippert,  31  Fed. 

4  Kendrick  ».  Emmons,  2  Bann.  &  Rep.  911,  1887;  Seibert  Oil  Co.  ». 

Ard.  210,  1875.  Powell  Co.  35  Fed.  Rep.  591,  l88«. 

6  Gramme  Electrical  Co.  v.  Elec-  '  Bate  Refrigerating  Co.  ®.  Gillett, 


CHAP.   VII.]  LETTERS   PATENT.  127 

Whether  these  enactments  apply  where  the  invention 
claimed  in  the  United  States  patent  was  not  claimed  but 
only  described  in  the  prior  foreign  patent,  is  a  question 
which  has  been  deqided  in  the  affirmative  in  one  case,1  and 
in  the  negative  in  another,7  and  has  not  yet  been  settled. 

In  a  case  to  which  these  enactments  apply,  the  United 
States  patent  will  not  expire  with  the  first  term  of  the  for- 
eign patent,  if  the  foreign  patent  is  extended  before  the  ex- 
piration of  its  first  term,  in  pursuance  of  a  statute  which 
was  in  force  when  the  United  States  patent  was  applied  for 
and  when  it  was  issued,  and  which  conferred  an  absolute 
right  to  such  an  extension,  and  if  the  extension  or  exten- 
sions of  the  foreign  patent  cover  a  continuous  space  of 
time  ; '  but  it  has  been  decided  on  the  Circuit,  and  not  yet 
otherwise  decided  by  the  Supreme  Court,  that  where  the 
patentee  has  no  absolute  right  to  an  extension  of  the  first 
term  of  his  foreign  patent,  no  such  extension  has  any  effect 
upon  the  duration  of  his  United  States  patent.4 

The  termination  of  a  foreign  patent,  prior  to  its  appointed 
end,  because  of  an  omission  of  the  patentee  to  do  what  the 
foreign  laws  require  in  order  to  keep  it  in  force,  has  no 
effect  upon  the  duration  of  a  corresponding  United  States 
patent ; "  but  a  repeal  ab  initio,  of  a  foreign  patent  which 
would  otherwise  limit  the  duration  of  a  corresponding 
United  States  patent,  restores  the  latter  to  its  full  term  of 
seventeen  years." 

It  is  not  necessary,  to  the  validity  of  a  United  States  pat- 
ent granted  for  an  invention  which  has  previoasly  been 
granted  in  a  foreign  country,  that  it  shall  be  so  limited  on 
its  face,  as  to  appear  to  expire  at  the  same  time  with  the 

13  Fed.    Rep.  553,   1882;   Gramme          *  Bate  Refrigerating  Co.  t>.  Ham- 
Electrical  Co.  «.  Electric  Co.  17  Fed.  mond.  129  U.  S.  151,  1889. 
Rep.    838,    1883  ;   Edison    Electric          4  Henry  «.  Tool  Co.  8  Bonn.  & 
Light  Co.  t>.  United  States  Electric  Ard.  501,  1878. 
Lighting  Co.  35  Fed.  Rep.  1&5.  1888.          *  Holmes  Protective  Co.  «.  Alarm 

1  Commercial  Mfg.  Co.  t>.  Canning  Co.  21  Fed.  Rep.  458,  1884;  Paillard 

Co  27  Fed.  Rep.  87,  1886.  «.  Bruns,  29  Fed.  Rep.  864,  1886. 

*  Holmes  Protective  Co.  v.  Alarm          •  Bate  Refrigerating  Co.  t>.  Gil- 
Co.  22  Fed.  Rep.  341,  1884.  lett,  20  Fed.  Rep.  192,  1884. 


128  LETTERS    PATENT.  [CHAP.  VII. 

foreign  patent  which  limits  its  life.1  The  statute  is  satis- 
fied when  the  courts  decline  to  enforce  it  after  the  expira- 
tion of  that  foreign  patent,  whether  or  not  it  appears  on  its 
face  to  be  so  limited.2 

The  law  set  forth  in  this  section  applies  to  no  patent 
which  was  originally  granted  prior  to  July  8,  1870  ;  and 
applies  to  no  reissue  of  any  patent  which  was  originally 
granted  before  that  date,  even  though  the  reissue  itself  was 
granted  after  that  date.3  The  duration  of  such  patents, 
where  they  were  granted  for  inventions  which  had  previ- 
ously been  granted  in  some  foreign  country,  was  governed 
by  certain  earlier  statutes  which  it  is  now  in  order  to  ex- 
plam. 

§  164.  Section  8  of  the  Patent  Act  of  1836  provided  that 
nothing  therein  contained  should  be  construed  to  deprive 
any  original  and  true  inventor  of  the  right  to  a  patent  for 
his  invention,  by  reason  of  his  having  previously  taken  out 
letters  patent  therefor  in  a  foreign  country,  and  the  same 
having  been  published,  at  any  time  within  six  months  next 
preceding  the  filing  of  his  specification  and  drawings.4 
Section  6  of  the  Patent  Act  of  1839  provided  that  no  per- 
son should  be  debarred  from  receiving  a  patent  for  any  in- 
vention, as  provided  in  the  Act  of  1836,  by  reason  of  the 
same  having  been  patented  in  a  foreign  country  more  than 
six  months  prior  to  his  application,  provided,  among  other 
things,  that  every  such  patent  should  be  limited  to  the 
term  of  fourteen  years  from  the  date  or  publication  of  such 
foreign  letters  patent.5  Tha  effect  of  these  enactments  was 
to  allow  an  inventor  to  take  out  a  patent  in  the  United 
States,  for  an  invention  which  he  had  previously  patented 
in  a  foreign  country,  no  matter  how  long  previously  that 


1  Telephone  Cases,  126  U.  8.  572,  3  Badische  Anilin  and  Soda  Fab- 

1888  ;     Bate    Refrigerating  Co.   v.  rik  t>.  Hamilton   Mfg.  Co.  3  Bann. 

Hammond,  129  U.  S.  151, 1889.  &  Ard.  235,  1878. 

*  New    American    File     Co.    v.  4  5  Statutes  at  Large,    Ch.    357, 
Nicholson  File  Co  8  Fed.  Rep.  816,  Section  8,  p.  121. 
1881;  Canan  v.  Mfg.   Co.   23  Fed.  B  5  Statutes  at  Large,  Ch.  88,  Sec- 
Rep.  185,  1885.  tion  6,  p.  354. 


CHAP.  VII.]  LETTERS    PATENT.  129 

foreign  patent  was  granted ; '  but  the  duration  of  the 
United  States  patent  was  limited  to  the  term  of  fourteen 
years  from  the  date  or  publication  of  the  foreign  patent, 
unless  the  United  States  patent  was  applied  for  within  six 
months  after  the  foreign  patent  was  taken  out,  and  within 
six  months  after  the  foreign  patent  was  published.  This 
law  applied  only  to  cases  where  the  foreign  patent  was 
published,3  or,  if  it  was  a  British  patent,  was  sealed,3  be- 
fore the  United  States  patent  was  applied  for.  It  did  not, 
therefore,  affect  any  United  States  patent  for  an  invention 
which  was  patented  in  a  foreign  country  while  the  applica- 
tion for  the  United  States  patent  was  pending  in  the  Patent 
Office.  It  was  not  necessary  under  the  law  stated  in  this 
section,  any  more  than  it  is  necessary  under  the  law  stated 
in  the  last,  that  a  patent  should  be  limited  on  its  face,  so 
as  to  appear  to  expire  when  it  really  ceased  to  be  in  force. 
Whether  so  limited  or  not,  the  courts  would  limit  it  to  its 
legal  life,  when  called  upon  to  enforce  it  after  the  end  of 
that  life  ;  but  its  validity  for  the  term  of  fourteen  years 
from  the  date  of  the  foreign  patent,  was  unaffected  by  the 
fact  that  on  its  face  the  United  States  patent  purported  to 
run  for  fourteen  years  from  its  own  date.4 

§  165.  Section  16  of  the  Patent  Act  of  March  2,  1861, 
provided  that  all  patents  thereafter  granted  should  remain 
in  force  for  the  term  of  seventeen  years  from  the  date  of 
issue  ;  and  the  Supreme  Court  has  decided  that  this  enact- 
ment modified  the  statute  of  1839  precisely  as  it  would 
have  done  had  it  expressly  substituted  the  word  "  seven- 
teen "  for  the  word  "  fourteen  "  in  the  earlier  statute  ;  thus 
making  it  read  :  "  every  such  patent  shall  be  limited  to  the 
term  of  seventeen  years  from  the  date  or  publication  of 
such  foreign  letters  patent." '  The  law  which  was  estab- 

1  De    Florez    v.     Reynolds,     17  1885. 

Blatch.  444,  1880.  4  O'Reilly  t>.  Morse,  15  Howard, 

•  French  t>.  Rogers,  1  Fisher,  136.  62.  1853. 

1851.  8  Siemens's  Adm'r  n.  Sellers,  128 

»  Gold  &  Stock  Telegraph  Co.  t>.  U.  S.  276,  1887. 
Telegram   Co.   23   Fed.    Rep.    343, 


130  LETTERS    PATENT.  [CHAP.   VII. 

lished  on  the  subject  by  the  Patent  Act  of  1836,  as  modified 
by  the  Patent  Act  of  1839,  was  still  further  modified  to 
that  extent  by  the  Patent  Act  of  March  2, 1861 ;  and  as  thus 
modified  it  is  the  law  which  governs  the  point,  in  respect 
of  patents  granted  between  the  latter  date  and  July  8, 1870. 

§  170.  The  terms  of  all  United  States  patents  begin  at 
their  respective  dates.1  Those  dates  are  selected  by  the 
Commissioner  of  Patents,  but  they  cannot  be  later  than  six 
months  after  the  time  at  which  the  respective  applications 
are  allowed  ; 2  and  cannot  be  earlier  than  the  time  of  such 
allowance :  that  is  to  say,  patents  cannot  now  be  ante- 
dated.3 

Section  8  of  the  Patent  Act  of  1836  provided  that  when- 
ever the  applicant  should  request  it,  the  patent  should  take 
date  from  the  time  of  the  filing  of  the  specification  and 
drawings,  not  however  exceeding  six  months  prior  to  the 
actual  issuing  of  the  patent."  This  continued  to  be  the  law 
for  nearly  a  quarter  of  a  century,  and  patents  so  antedated 
conferred  rights  of  action  upon  the  patentees,  for  infringe- 
ments occurring  after  their  respective  dates,  and  before  the 
respective  days  of  their  actual  issue.5  Section  16  of  the 
Patent  Act  of  March  2, 1861,  provided  a  change  in  this  law : 
provided  that  thereafter  the  term  of  patents  should  begin 
with  the  dates  of  their  respective  issue,  and  such  has  ever 
since  been  the  law  on  the  subject.6  In  actual  practice,  pat- 
ents are  now  dated  and  issued  on  the  third  or  the  fourth 
Tuesday  after  the  applicant  pays  the  final  Patent  Office  fee. 

§  171.  The  grantee  of  the  government  in  cases  of  letters 
patent  for  inventions  may  be  the  inventor  himself  ; 7  or  his 
assignee  ; 8  or  an  assignee  of  an  assignee  ; 9  or  an  assignee 


1  Rein  v.  Clayton,  37  Fed.  Rep.  566,  1880. 

355,  1889.  6  12  Statutes  at  Large,    Ch.  88, 

2  Revised  Statutes,  Section  4885.  Section  16,  p.  249. 

8  De    Florez     v.     Raynolds,     17  '  Revised  Statutes,  Section  4886. 

Blatch.  444,  1880  s  Revised  Statutes,  Section  4895. 

4  5   Statutes  at  Large,   Ch.    357,  9  Selden  v.   Gas  Burner  Co.   19 

Sections,  p.  121.  Blatch.  544,  1881. 

6  Burdett  0.  Estey,  3  Fed.  Rep. 


CHAP.  VII.]  LETTERS   PATENT.  131 

who  has  assigned  the  invention  ; '  or  if  an  inventor  dies  be- 
fore any  patent  is  granted  for  his  invention,  the  right  to 
obtain  the  patent  devolves  on  his  executor  or  administrator, 
in  trust  for  the  heirs  at  law  of  the  deceased,  in  case  he 
shall  have  died  intestate  ;  or  if  he  shall  have  left  a  will, 
disposing  of  the  invention,  then  in  trust  for  his  devisees.1 
In  this  last  case  the  patent  may  be  granted  to  the  executor 
by  his  proper  personal  name,  without  any  declaration  that  he 
takes  in  his  representative  capacity ; '  and  the  same  thing 
is  equally  true  in  cases  where  the  patent  is  granted  to  an 
administrator.  Where  an  inventor  assigns  his  invention 
before  making  an  application  for  a  patent,  and  then  makes 
such  an  application,  coupled  with  a  request  that  the  patent 
be  granted  to  the  assignee,  and  accompanied  with  an  entry 
of  the  assignment  on  the  records  of  the  Patent  Office,  and 
then  dies  before  any  patent  is  granted  ;  there  appears  to 
be  no  reason  why  the  patent  should  not  be  granted  to  the 
assignee,  though  the  statute  literally  provides  that  in  all 
cases  where  the  inventor  dies  before  the  patent  is  granted, 
the  right  to  the  patent  devolves  on  his  executor  or  adminis- 
tator  in  trust  for  his  heirs  or  devisees.4  But  this  statute 
must  receive  a  reasonable  construction,  and  it  is  not  rea- 
sonable to  hold  that  the  death  of  an  inventor,  who  has  sold 
and  assigned  his  inchoate  right  to  a  patent,  should  operate 
to  divest  his  assignee  of  that  right,  and  devolve  it  upon 
another  person,  in  trust  for  still  another  party.  Nor  is 
there  any  propriety,  in  such  a  case,  in  granting  the  patent 
to  the  executor  or  administrator,  on  the  theory  that  he  will 
take  as  trustee  for  the  assignee.  The  assignee  requires  no 
trustee,  for  his  inchoate  title,  is  a  legal,  and  not  a  merely 
equitable  one ;  *  and  the  executor  or  administrator,  if  he 


1  Consolidated  Electric  Light  Co.  336, 1859;  Northwestern  Fire  Exttn- 

v.  Edison  Electric  Light  Co.  25  Fed.  guisher  Co.  v.  Philadelphia  Extin- 

Rep.  719,  1885;  Consolidated  Elec-  guisher  Co.  1   Bann.  &  Ard.   177, 

trie  Light  Co.  t>.  McKeesport  Light  1874. 

Co.  34  Fed.  Rep.  335,  1888.  4  Revised  Statutes,  Section  4898. 

•  Revised  Statutes,  Section  4896.  *  Hendrie  v.  Sayles,  98  U.  S.  549, 

3  Stimpson  «.   Rogers,  4  Blatch.  1878. 


132  LETTERS   PATENT.  [CHAP.  VII. 

takes  at  all,  must  take  as  trustee  for  the  heirs  or  devisees 
of  the  inventor.  Where  an  inventor  assigns  his  invention 
and  dies  before  making  any  application  for  a  patent,  a  dif- 
ficulty arises  for  which  the  statute  affords  no  clear  solution. 
In  such  a  case,  it  is  provided  that  the  application  must  be 
made  and  sworn  to  by  the  executor  or  administrator,  for 
an  assignee  cannot  apply  for  a  patent  except  on  the  oath  of 
the  inventor  himself.1  It  is  also  provided,  that  where  an 
executor  or  administrator  applies  for  a  patent,  he  must 
take  that  patent,  if  granted,  in  trust  for  the  heirs  or  dev- 
isees of  the  inventor.2  Now  under  these  circumstances,  the 
law  must  do  one  of  three  things.  It  must  ignore  this  last 
provision,  and  hold  that  the  executor  or  administrator 
takes  in  trust  for  the  assignee ;  or  it  must  impose  a  trust 
upon  a  trust,  by  holding  that  the  executor  or  administrator 
takes  in  trust  for  the  heirs  or  devisees,  and  they  take  in 
trust  for  the  assignee  ;  or  it  must  deprive  the  assignee  of 
his  right  altogether.  The  first  alternative  flies  in  the  face 
of  the  statute,  and  the  third  flies  in  the  face  of  justice. 
The  second  is  consistent  with  conscience,  and  can  probably 
be  adopted  and  enforced  by  courts  of  equity. 

§  172.  Letters  patent  are  documents  consisting  of  the 
grant  and  the  specification ;  and  where  drawings  form  a- 
part  of  the  application,  they  also  form  a  part  of  the  letters 
patent.  The  grant  is  a  paper,  issued  in  the  name  of  the 
United  States,  under  the  seal  of  the  Patent  Office,  and 
signed  by  the  Secretary  of  the  Interior,  or  under  his  direc- 
tion by  one  of  the  Assistant  Secretaries  of  the  Interior,3  and 
countersigned  by  the  Commissioner  of  Patents.  It  contains 
a  short  title  of  the  invention,  and  purports  to  grant  to  the 
patentee,  his  heirs  or  assigns,  for  the  term  of  seventeen 
years,  the  exclusive  right  to  make,  use,  and  vend  the  inven- 
tion, throughout  the  United  States  and  the  territories 
thereof ;  and  it  refers  to  the  specification,  for  the  particulars 


1  Revised  Statutes,  Sections  4895,          8  25  Statutes  at  Large,  Ch.  15,  p. 
4896.  40. 

8  Revised  Statutes,  Section  4896. 


CHAP.  VII.]  LETTERS   PATENT.  133 

of  the  invention  covered  by  the  grant.1  Letters  patent  are 
valid  where  the  grant  is  signed  by  an  Acting  Secretary  of 
th*e  Interior,  or  countersigned  by  an  Acting  Commissioner 
of  Patents ;  and  letters  patent,  so  signed,  are  admissible  in 
evidence  without  any  pleading  or  proof  of  the  title  of  such 
officers  to  their  respective  offices.  Courts  take  judicial 
notice  of  the  persons  who  preside  over  the  departments  or 
bureaus  of  the  government,  whether  permanently  or  tem- 
porarily ;  and  the  production  of  their  commissions  is  not 
necessary  to  support  their  official  acts."  But  if  letters 
patent  are  issued  without  any  signature  of  the  Secretary  of 
the  Interior,  or  of  an  Acting  or  Assistant  Secretary  of  the 
Interior,  the  omission  is  fatal  to  the  validity  of  those 
letters  patent ;  and  the  same  effect  would  result  from  an 
omission  of  the  counter-signature  of  the  Commissioner 
of  Patents,  unless  an  Acting  Commissioner  of  Patents 
should  countersign  in  his  stead.*  Such  an  error  may,  how- 
ever, be  corrected  by  affixing  the  omitted  signature  ;  but 
such  a  correction  will  affect  only  the  future,  and  not  the 
past,  portion  of  the  term  of  the  patent4  A  misnomer  of  the 
patentee,  in  a  grant,  does  not  invalidate  the  patent,  if  he 
can  be  identified  by  means  of  any  description  which  the 
letters  patent  may  contain.*  If  the  letters  patent  contain 
no  means  for  correcting  the  misnomer,  it  may  be  corrected 
by  the  proper  officers  of  the  government,  whenever  those 
officers  become  convinced  of  the  mistake.* 

§  173.  The  word  "  specification,"  whenever  it  is  used  in 
the  statute  without  the  word  "  claim,"  covers  both  the  claim 
and  the  description ;  and  whenever  it  is  used  with  the  word 
claim,  it  covers  the  description  only.7  The  first  is  its  more 


1  Revised  Statutes,  Section  4883,  1888. 

4884.  *  Northwestern  Fire  Extinguisher 

*  York  and  Maryland  Line  Rail-  Co.   t>.    Philadelphia    Extinguisher 

road  Co.  v.  Winans,  17  Howard,  30,  Co.  1  Bann.  &  Ard.  177,  1874. 

1854.  *  Bell  v.  Hearne,  19  Howard,  262, 

3  Marsh  v.  Nichols,  128  U.  S.  605,  1856. 

1888.  '  Wilson  v.  Coon,  18  Blatch.  532, 

4  Marsh  t>.  Nichols,  128  U.  S.  605,  1880. 


134  LETTEKS    PATENT.  [CHAP.  VII. 

general  meaning,  and  to  avoid  confusion  it  is  never  used  in 
any  other  sense  in  this  book.  The  proper  characteristics 
of  specifications  are  herein  explained  by  explaining  the 
proper  characteristics  of  descriptions  and  claims,  which 
are  the  component  parts  of  specifications. 

§  174.  The  description  of  the  invention,  which  forms  a 
part  of  every  specification,  is  required  to  set  forth  that  in- 
vention, and  the  manner  and  process  of  making  and  using 
it,  in  such  full,  clear,  concise,  and  exact  terms  as  to  enable 
any  person  skilled  in  the  art  or  science  to  which  it  apper- 
tains, or  with  which  it  is  most  nearly  connected,  to  make 
and  use  the  same  ;  and  in  case  of  a  machine,  the  description 
is  required  to  explain  the  principle  thereof,  and  the  mode 
of  applying  that  principle  which  the  inventor  believes  to  be 
the  best.1  It  is  not  necessary  that  the  description  should 
be  intelligible  to  every  intelligent  man,  nor  to  every  skilled 
mechanic.  If  it  can  be  understood  by  those  who  possess 
full  knowledge  of  the  prior  inventions  in  the  same  depart- 
ment of  art  or  science,  it  is  full,  clear,  concise,  and  exact 
enough  to  comply  with  the  statute/  In  explaining  this 
point  of  law,  Justice  BEADLEY,  in  the  decision  just  cited, 
used,  a  particularly  felicitous  illustration.  His  Honor  said : 
"  When  an  astronomer  reports  that  a  comet  is  to  be  seen 
with  the  telescope,  in  the  constellation  of  Auriga,  in  so  many 
degrees  of  declination,  and  so  many  hours  and  minutes  of 
right  ascension,  it  is  all  Greek  to  the  unskilled  in  science  ; 
but  other  astronomers  will  instantly  direct  their  telescopes 
to  the  very  point  in  •the  heavens  where  the  stranger  has 
made  his  entrance  into  our  system.  They  understand  the 
language  of  their  brother-scientist.  If  a  mechanical  en- 
gineer invents  an  improvement  on  any  of  the  appendages 
of  a  steam-engine,  such  as  the  valve-gear,  the  condenser, 
the  steam-chest,  the  walking-beam,  the  parallel  motion,  or 
what  not,  he  is  not  obliged,  in  order  to  make  himself  under- 
stood, to  describe  the  engine,  nor  the  particular  append- 


Revised  Statutes,  Section  4888.  *  Loom  Co.  v.  Higgius,  105  U.  S. 

580,  1881. 


CHAP.  VII.]  LETTERS    PATENT.  135 

age  to  which  the  improvement  refers,  nor  its  mode  of  con- 
nection with  the  principal  machine.  These  are  already  fa- 
miliar to  others  skilled  in  that  kind  of  machinery.  He 
may  begin  at  the  point  where  his  invention  begins,  and  de- 
scribe what  he  has  made  that  is  new,  and  what  it  replaces 
of  the  old." 

These  observations  are  particularly  applicable  to  descrip- 
tions of  machinery ;  but  they  also  suggest  the  true  princi- 
ples on  which  to  judge  of  the  sufficiency  of  descriptions  of 
processes,  manufactures,  and  compositions  of  matter.  Rele- 
vant to  this  last  class  of  subjects  of  patents,  it  has  been 
held  that  descriptions  should  state  the  component  parts 
thereof,  and  the  proportions  in  which  they  are  to  be  mixed 
or  combined,  and  should  do  this  with  clearness  and  pre- 
cision, and  should  not  leave  the  public  to  ascertain  any 
such  fact  by  experiment.1  But  where  proportions  must 
vary  with  circumstances,  a  description  of  an  invention  is  suffi- 
cient, if  it  states  the  proportions  proper  under  ordinary 
circumstances,  and  points  out  the  direction  in  which  they 
must  be  varied  when  circumstances  are  changed.* 

§  175.  An  inventor  need  not  explain  in  his  description,  or 
know  in  point  of  fact,  what  laws  of  nature  those  are,  which 
cause  his  invention  to  work.*  Neither  is  any  description 
insufficient,  in  the  eye  of  the  law,  on  account  of  any  mere 
errors  it  may  be  found  to  contain,  where  those  errors 
would  at  once  be  detected,  and  their  remedies  be  known, 
by  any  person  skilled  in  the  art,  when  making  specimens 
of  the  invention  set  forth,  or  when  practising  that  inven- 
tion if  that  invention  is  a  process,4  or  where  such  errors 
relate  to  the  degree  of  efficiency  of  the  invention.*  Nor 
need  a  description  state  every  use  to  which  the  described 
and  claimed  invention  is  applicable,  in  order  to  cover 

1  Wood  v.  Underbill,  5  Howard,  Quinby,  4.  Bann.  &  Ard.  195,  1879. 

1,1847;  Tyler  «.  Boston,  7  Wallace,  4  Singer  «.  Walmsley,   1  Fisber, 

327,  1868.  559,  1860 ;  Kendrick  c.  Emmons,  2 

1  Consolidated  Valve  Co.  v.  Valve  Bann.  &  Ard.  210,  1875. 

Co.  113  U.  S.  177,  1884.  •  Micbaels   t>.   Roessler,  84  Fed. 

3  Saint   Louis    Stamping    Co.    v.  Rep.  325,  1888. 


136  LETTEKS    PATENT.  [CHAP.   VII. 

every  such  use.1  Neither  is  it  necessary,  in  a  description 
in  a  patent  for  a  process,  to  set  forth  all  the  modes  in 
which  that  process  may  be  performed,  or  all  the  kinds  of 
apparatus  which  may  be  used  in  performing  it,  in  order  to 
cover  that  process  with  the  patent.  It  is  enough  to  de- 
scribe one  particular  mode,  and  one  particular  apparatus,  by 
means  of  which  the  process  may  be  performed  with  at  least 
some  beneficial  result.3  Nor  is  a  description  fatally  defec- 
tive merely  because  it  omits  to  mention  something  which 
contributes  only  to  the  degree  of  benefit,  provided  the  in- 
vention will  work  beneficially  without  it ; 3  but  the  omission 
of  anything  absolutely  material  to  the  utility  of  the  inven- 
tion described,  is  a  fatal  defect  in  a  description ; 4  unless 
that  omission  would  naturally  be  supplied  by  any  person 
skilled  in  the  art,  when  making  the  invention  if  it  be  a 
thing,  or  when  using  it  if  it  be  a  process.  Accordingly 
it  has  been  held,  that  where  one  element  of  a  new  com- 
bination covered  by  a  patent,  must  have  a  certain  form, 
in  order  to  operate  in  that  combination,  and  where  another 
form  of  that  element  is  known  to  persons  skilled  in  the 
art,  a  description  is  insufficient  which  merely  states  that 
such  old  element  is  a  part  of  the  combination,  without 
saying  or  showing  which  of  its  known  forms  is  applica- 
ble to  the  case.*  On  the  other  hand,  no  excess  of  descrip- 
tion is  injurious  to  the  validity  of  a  patent,  unless  the  re- 
dundant matter  was  introduced  with  fraudulent  intention." 

§  176.  The  claim  or  claims  of  a  specification  are  neces- 
sarily inserted  in  order  to  conform  to  the  statutory  require- 
ment, that  the  patentee  shall  particularly  point  out  and  dis- 
tinctly claim  the  part,  improvement,  or  combination,  which 
he  claims  as  his  invention.7  A  claim  covers  and  secures  a 
process,  a  machine,  a  manufacture,  or  a  composition  of 

1  Pike  v.   Potter,    3  Fisher,    55,  4  Can-  v.  Rice,  1  Fisher,  204, 1856. 

1859.  s  Schneider  t>.  Thill,  5  Bann.  & 

*  Tilghman  v.   Proctor,  102  U.  S.  Ard.  565,  1880. 

728,  1880.  6  Sewall  v.  Jones,  91  U.  S.  186, 

3  Sewall  v.  Jones,  91  U.  S.  185,  1875. 

1875.  •  Revised  Statutes,  Section  4888. 


•'.'HAP.   VII.]  LETTERS   PATENT.  137 

matter,  and  never  the  function  or  result  of  either.1  A  claim 
may  cover  the  entire  process,  machine,  manufacture,  or  com- 
position of  matter,  which  is  set  forth  in  the  description,  or 
it  may  cover  such  parts,  or  such  sub-processes,  or  such 
sub-combinations  as  are  new  and  useful  inventions ;  and 
the  specification  may  contain  a  claim  for  the  whole,  and 
other  claims  for  separate  parts,  and  still  other  claims  for 
separate  sub-processes  or  sub-combinations.2  But  in  order 
to  be  sustained,  each  claim  must  be  able  to  independently 
withstand  the  tests  of  invention,  of  novelty,  and  of  utility, 
which  are  stated  in  the  second,  third,  and  fourth  chapters  of 
this  book,  respectively.  All  claims  are  required  to  be 
specific,  so  that  the  public  may  know  what  they  are  pro- 
hibited from  doing  during  the  existence  of  the  patent,  and 
what  they  are  to  have  at  the  end  of  the  term  as  a  considera- 
tion for  the  grant.*  The  necessary  degree  of  particularity 
in  claims  may  be  'reached  in  various  modes.  Where  the 
invention  is  an  entire  machine,  the  claim  is  sufficient  if  it  is 
clearly  co-extensive  with  the  machine ;  and  where  the  in- 
vention is  a  part  of  a  machine  or  manufacture,  that  part 
must  be  clearly  indicated  in  the  claim  which  covers  it.4 
Claims  for  combinations  of  a  plurality  of  the  described 
devices,  but  less  than  all  of  them,  should  specify  those 
devices  unmistakably,  and  should  clearly  indicate  that  it  is 
the  specified  combination  that  is  claimed.  But  though  this 
degree  of  obvious  certainty  is  highly  desirable  in  a  com- 
bination claim,  it  is  not  absolutely  necessary  to  the  validity 
of  such  an  one ;  for  a  claim  may  declare  that  it  covers  so 
much  of  the  described  mechanism  as  effects  a  particular 
specified  result,  without  specifying  those  parts  themselves. 
In  such  a  case  it  is  a  question  of  fact  to  be  determined  in 


1  Corning  v.  Burden,  15  Howard,  Co.   «.   Thorn,   25  Fed.   Rep.  500, 

252,    1853;    O'Reilly  v.  Morse.    15  1885. 

Howard,  62,  1853;  Carver  v.  Hyde,  3  Brooks  v.  Fiske,  15  Howard,  212, 

16  Peters,   513,   1842;    Le  Roy    v.  .1858. 

Tatham,  14  Howard.  156,  1852.  4  Seymour  r>.  Osborne,  11  Wallace, 

*  Railroad  Co.  9.  Dubois,  12  Wai-  516,  1870. 
lace,   47,    1870;    National  Machine 


138  LETTERS  PATENT.  [CHAP.  VII. 

court,  if  necessary,  which  parts  those  are  which  effect  that 
result  and  are  therefore  covered  by  the  claim.1  So  also, 
two  or  more  claims  in  substance,  may  sometimes  be  com- 
bined in  one  claim  in  form.5  This  may  be  accomplished  in 
different  ways,  and  among  others  by  inserting  in  the  claim 
the  words  "  with  or  without "  before  the  name  or  other 
designation  of  one  or  more  of  the  enumerated  parts  of  the 
process,  machine,  combination,  manufacture,  or  composi- 
tion of  matter,  covered  by  that  claim.3  The  claim  of  the 
Charles  Goodyear  rubber  patent  had  this  characteristic.  It 
was  a  claim  for  vulcanized  India  rubber,  whether  with  or 
without  other  ingredients,  chemically  altered  by  the  appli- 
cation of  heat,  substantially  as  described.4 

§  177.  Letters  patent  may  be  valid  as  to  one  or  more 
claims,  while  being  invalid  as  to  one  or  more  other  claims 
in  the  same  specification.5  But  letters  patent  which  con- 
tain a  needless  multiplication  of  nebulous  claims,  calculated 
to  mislead  the  public,  are  void  for  that  reason,  if  for  no 
other.8  This  word  "  calculated  "  is  the  word  used  by  the 
justice  who  announced  the  opinion  of  the  Supreme  Court 
upon  the  point.  It  is  itself  somewhat  nebulous,  for  it  is 
questionable  whether  it  means  apt  or  means  intended. 
Judge  W.  D.  SHIPMAN  was  quite  explicit  when  deciding  a 
similar  question.  He  held  that  a  patent  is  not  void  merely 
because  it  contains  a  plurality  of  claims,  each  of  which 
covers  the  same  thing,  and  covers  nothing  else,  where  there 
is  no  evidence  that  the  double  claim  was  made  with  inten- 
tion to  mislead/  In  the  light  of  this  decision,  the  word 
"  calculated "  in  the  Supreme  Court  decision,  is  seen  to 
signify  intended,  and  the  Supreme  Court  decision  is  there- 
fore to  be  read  with  that  explanation. 

1  Silsby  v.  Foote,  14  Howard,  218,          4  Rubber  Co.  v.  Goodyear,  9  Wal- 
1852;  Fay  v.  Cordesman,  109  U.  S.       lace,  79r>,  1869. 

420,  1883;  Hoe  v.   Knapp,  27  Fed.  6  Russell  v.  Place,  94  U.  S.   606, 

Rep.  208,  1886.  1876. 

2  Telephone  Cases,  126  U.  S.  537,  6  Carlton   z>.   Bokee,    17  Wallace, 
1887.  463,  1873. 

8  Tuck  v.  Bramhill,  6  Blatch.  95,  7  Tompkinsti.  Gage,  5Blatch.270, 
1868.  1861. 


CHAP.  VII.]  LETTERS   PATENT.  139 

If  all  the  claims  of  a  particular  patent  are  void,  either  for 
want  of  particularity,  or  for  want  of  invention,  novelty,  or 
utility,  or  for  any  other  reason  or  reasons ;  that  patent  is 
also  void,  even  though  one  or  more  valid  claims  might  have 
been  made  and  allowed  on  the  basis  of  the  descriptive  part 
of  the  specification.1 

§  178.  The  statutory  requirements  relevant  to  particular- 
ity in  the  descriptions  and  claims  of  letters  patent,  are  con- 
ditions precedent  to  the  authority  of  the  Commissioner  of 
Patents  to  issue  such  documents  ; a  and  if  such  a  document 
is  issued,  the  description  or  claims  in  which,  does  not  con- 
form to  these  requirements,  then  that  document  is  void.3 
But  where  the  inventions,  which  are  covered  by  part  of  the 
claims  of  a  patent,  are  sufficiently  described,  those  claims 
may  be  valid,  though  other  claims  in  the  same  patent  are 
void  for  want  of  sufficient  description.4  Such  invalidity 
does  not  depend  on  the  intention  of  the  inventor,  but  is  a 
legal  inference  from  his  failure  to  give  to  his  description 
and  claims  the  statutory  particularity.5  It  is  a  question  of 
jurisdiction  in  the  Commissioner  of  Patents  ;  not  a  question 
of  fraudulent  intent  in  the  delinquent  patentee.  The  Com- 
missioner is  authorized  to  issue  letters  patent  only  on 
adequate  specifications.  If  he  issues  them  on  inade- 
quate specifications,  their  invalidity  cannot  be  removed 
by  showing  that  the  inadequacy  arose  from  ignorance  and 
not  from  fraud.  This  point  of  law  is  not  shaken  by  the 
fact  that  Section  4920  of  the  Revised  Statutes,  in  providing 
for  special  defences  to  patent  suits,  under  the  general  issue 
in  pleading,  provides  that  among  such  defences,  the  defend- 
ant may  prove  "  that  for  the  purpose  of  deceiving  the  public 
the  description  filed  by  the  patentee  in  the  Patent  Office, 
was  made  to  contain  less  than  the  whole  truth  relative  to 

1  Wisner  v.  Grant,  SBann.  &  Ard.  ner,  482,  1833. 

215,  1880.  4  Bene  t>.  Jeantet,  129  U.  S.  683, 

*  Seymour  «.  Osborne,  11  Wallace,  1888. 

516,  1870.  *  Grant  v.  Raymond,  6  Peters,  218, 

3  O'Reilly*.  Morse,  15  Howard,  1832. 
62,  1853;  Ames  «.  Howard,  1  Sum- 


140  LETTERS   PATENT.  [CHAP.  VII. 

the  invention  or  discovery,  or  more  than  is  necessary  to 
produce  the  desired  effect."  There  are  several  grounds 
for  this  opinion  of  the  text  writer.  First :  An  omission  to 
state  the  whole  truth  relative  to  an  invention,  is  not  neces- 
sarily the  same  thing  as  an  insufficient  description  of  that 
invention.  A  specification  might  have  one  or  more  of 
several  faults  belonging  to  the  first  category,  and  be  free 
from  objection  on  the  latter  score.  One  of  these  would  be 
an  omission  to  state  some  double  use  of  which  the  invention 
is  capable.  Such  an  omission,  if  made  in  ignorance  of  that 
double  use,  ought  not  to  invalidate  the  patent,  but  if  made 
with  a  fraudulent  intention  to  keep  that  double  use  forever 
secret,  it  ought  to  have  that  effect.  The  defence  in  Section 
4920  is  aimed  at  such  cases,  and  not  at  cases  of  insufficiency 
of  specification.  Second :  The  defences  provided  for  in 
Section  4920  are  not  all  the  defences  that  may  be  interposed 
in  infringement  cases.  They  are  merely  the  defences  that 
may  be  interposed  under  the  general  issue.  The  defence 
of  insufficient  specification,  as  well  as  any  other  legal  defence, 
may  be  interposed  by  a  special  plea.1 

§  179.  It  is  a  question  of  fact  for  a  jury  in  an  action  at 
law,  or  for  a  chancellor  in  an  action  in  equity,  to  determine 
whether  the  specification,  including  the  claim,  of  a  patent, 
conforms  to  the  statutory  requirements  relevant  to  particu- 
larity." That  question  is,  in  both  tribunals,  a  question  of 
evidence  and  not  a  question  of  construction.3 

§  180.  Two  or  more  inventions,  if  they  relate  to  the  same 
subject,  or  are  in  their  nature  and  operation  connected  to- 
gether, may  be  covered  by  a  corresponding  number  of 
claims  in  a  single  letters  patent.4  On  the  other  hand,  sepa- 
rate letters  patent  may  be  granted  for  different  parts  of  the 


1  Reckendorfer  v.  Faber,  92  TJ.  S.  1883. 

347,  1875.  4  Hogg  v.   Emerson,   6  Howard, 

2  Battin  v.  Taggert,    17  Howard,  483,  1848;  Dobson  «.  Carpet  Co.  114 
74,  1854.  U.  S.  446,  1884 ;  McComb  v.  Bro- 

3  Fisk    Clark    &    Flagg  «.    Hoi-  die,  1  Woods,  153,  1871 ;  Stevens  v. 
lander,  MacArthur  &  Mackey,  355,  Pritchard,  2  Bann.  &  Ard.  390,  1876. 


CHAP.  VII.]  LETTERS    PATEXT.  141 

same  machine.1  In  such  cases  it  is  proper  to  describe  the 
whole  machine  in  each  of  the  specifications,  and  to  picture 
the  whole  machine  in  each  set  of  drawings,  thus  causing 
the  separate  letters  patent  to  differ  from  each  other  only  in 
their  claims.2  A  plurality  of  patents  cannot,  however,  be 
granted  for  different  uses  of  the  same  invention."  Indeed 
all  the  uses  of  an  invention  are  covered  and  secured  by  a 
single  letters  patent  for  that  invention.4 

§  181.  To  construe  letters  patent,  is  to  determine  pre- 
cisely what  inventions  they  cover  and  secure.  Nothing  de- 
scribed in  letters  patent,  is  secured  thereby,  unless  it  is 
covered  by  a  claim.5  The  construction  of  letters  patent 
depends  therefore  upon  the  construction  of  their  respective 
claims ;  and  the  established  rules  by  means  of  which  claims 
are  properly  construed  may  constitute  the  next  subject  of 
discussion. 

§  182.  The  phrase  "  substantially  as  described,"  or  its 
equivalent,  when  such  a  phrase  occurs  in  a  claim,  throws 
the  investigator  back  to  the  description  for  means  of  con- 
struction ;  *  and  that  phrase  is  always  implied  in  claims 
wherein  it  is  not  expressed.7  The  words  "  substantially  as 
specified  "  mean  substantially  as  specified  in  regard  to  the 
particular  matter  which  is  the  subject  of  a  claim ; '  and  the 
same  rule  applies  with  the  same  force  to  the  words  "  sub- 
stantially as  described."  But  neither  of  those  phrases  will 

1  Graham  v.  McCormick,  11  Fed.  Co.  t>.  Packard,  5  Bann.  &  Ard.  296, 

Rep.  859,  1880;  Graham  v.  Mfg.  Co.  1880;  Blades  «.  Rand,  27  Fed.  Rep. 

11  Fed.  Rep.  138.  1880.  97,  1886;  Roemer  v.  Peddie,  27  Fed. 

*  M'Millin  p.  Rees,  5  Bann.  &  Ard.  Rep.  702.  1886;  Allison  t.  Brooklyn 

269,  1880.  Bridge,  29  Fed.  Rep.  517,  1886. 

*McComb  v.  Brodie,   1  Woods,  •  Seymours.  Osborne,  11  Wallace, 

153,  1871.  516,  1870  ;  Corn-Planter  Patent,  28 

4  Roberts®.  Ryer,  91  U.S.  157.  Wallace,  181, 1874;  Telephone  Cases, 

1875;  Ligowski  Clay  Pigeon  Co.  <?.  126  U.  8.  537,  1887. 

Clay  Bird  Co.  34  Fed.  Rep.  331, 1888;  T  Matthews   t.    Schoneberger,    4 

Thompson  ®.  Gildersleeve,  84  Fed.  Fed.  Rep.  635,  1880;  Westinghouse 

Rep.  45,  1888;  Stegner  t>.  Blake,  36  t>.  Air  Brake  Co.  2  Bann.  &  Ard.  57, 

Fed.  Rep.  183,  1888.  1875. 

s  M'Millin  «.   Rees,    5   Bann.   &  •  Lake  Shore  R.   R.  Co.   t>.   Car 

Ard.  269, 1880  ;  Delaware  Coal  &  Ice  Brake  Shoe  Co.  110  U.  8.  235. 1883. 


142  LETTERS  PATENT.  [CHAP,  VII. 

import  into  a  claim  every  minor  feature  of  every  part  of  the 
subject  thereof.1  The  implication  of  such  a  phrase,  where 
it  is  not  expressed,  follows  from  the  rule  that  while  descrip- 
tions are  considered  in  this  connection  only  for  the  purpose 
of  construing  claims,2  a  claim  should  always  be  construed 
in  the  light  of  the  description ; 3  and  the  certainty  of  that 
implication  indicates  the  propriety  of  omitting,  for  the  sake 
of  brevity,  all  such  phrases  from  claims. 

The  phrase  "  for  the  purpose  set  forth"  is  never  implied 
in  a  claim,  because  an  inventor  is  entitled  to  the  exclusive 
use  of  his  invention  for  all  purposes,  whether  he  sets  them 
all  forth  in  his  specification  or  not.4  And  such  a  phrase 
ought  never  to  be  expressed  in  a  claim,  because  it  cannot 
impart  validity  to  a  claim  otherwise  void,6  and  because  it 
may  enable  persons  to  avoid  infringement,  who  would 
otherwise  infringe.8 

The  drawings  attached  to  letters  patent  may  be  referred 
to  for  explanation  of  anything  which  the  description  leaves 
obscure,7  but  not  to  supply  a  total  omission  of  description.8 
And  neither  drawings  nor  descriptions  can  enlarge  claims,' 
unless  it  be  where  a  claim  is  limited  on  its  face  to  the  use 
of  the  invention  in  a  particular  environment,  and  where  the 
description  shows  that  it  was  intended  to  be  claimed  in 
other  environments  also.10  Claims  may  be  narrowed  by 


1  Temple  Pump  Co.  v.  Mfg.  Co.  6  Crescent  Brewing  Co.   «.  Got- 

30  Fed.  Rep.  442,  1887.  fried,  128  U.  S.  168,  1888. 

*  Pitts  v.  Wemple,   1   Bissell,  87,  6  Keystone  Bridge  Co.  v.  Iron  Co. 

1855.  95  U.  S.  278,  1877. 

3  Smith  v  Dental  Vulcanite  Co.  7  Hogg  v.  Emerson,  11  Howard, 
93  U.   S.  493,  1876;  Lull  ».  Clark,  587,  1850. 

13  Fed.  Rep.  456,  1882;  New  Amer-  «  Gunn  v.  Savage,  30  Fed.  Rep. 

ican  File  Co.  v.  Nicholson  File  Co.  369,  1887. 

31  Fed.  Rep.  289,  1887.  9  Railroad  Co.  «.  Mellon,  104  TJ.  S. 

4  Roberts  c.  Ryer,  91  U.  S.  157,  112, 1881;  White fl.Dunbar,  119 U.S. 
1875;   Ligowski  Clay  Pigeon  Co.  v.  51,  1886;  Ligowski  Clay  Pigeon  Co. 
Clay  Bird  Co.  34  Fed.  Rep.  331, 1888;  t>.  Target  Co.  35  Fed.  Rep.  757,  1888. 
Thompson  v.   Gildersleeve,  34  Fed.  10  LaRue  t>.  Electric  Co.  28  Fed. 
Rep.  45,  1888;  Stegner  v.  Blake,  36  Rep.  85, 1886;  LaRue  v.  Electric  Co. 
Fed.  Rep.  183,  1888.  31  Fed.  Rep.  83,  1887. 


CHAP*  VII.]  LETTERS   PATENT.  143 

limitations  in  the  description,1  and  also  by  importation  by 
construction  of  described  elements  which  are  necessary  to 
operativeness.* 

§  183.  Claims  which  are  functional  in  form  ;  that  is  to 
say  claims  which  literally  purport  to  cover  a  result  rather 
than  a  process  or  a  thing,  are  properly  construed  to  cover 
only  the  process  or  the  thing  which  produces  that  result, 
for  otherwise  such  claims  would  be  void.3 

§  184.  The  state  of  the  art,  to  which  an  invention  belongs, 
at  the  time  that  invention  was  made,  must  be  considered  in 
construing  any  claim  for  that  invention.4  The  leading  cases 
on  this  subject  are  McCormick  v.  Talcott,*  and  Railway  Co. 
v.  Sayles." 

The  doctrine  of  the  first  of  these  cases  is  as  follows.  The 
original  inventor  of  a  machine,  will  have  a  right  to  treat  as 
iufringers  all  who  make  machines  operating  on  the  same 
principle,  and  performing  the  same  functions,  by  analogous 
means,  or  equivalent  combinations ;  even  though  the  infring- 
ing machine  be  an  improvement  on  the  original,  and  patent- 
able  as  such.  But  if  the  invention  claimed,  be  itself  but  an 
improvement  on  a  known  machine,  by  a  mere  change  of 
form  or  combination  of  parts,  the  patentee  cannot  treat  an- 
other as  an  infringer,  who  has  improved  the  original  ma- 
chine, by  use  of  a  different  form  or  combination,  performing 
the  same  functions.  The  inventor  of  the  first  improvement 
cannot  invoke  the  doctrine  of  equivalents  to  suppress  any 
other  improvement  which  is  not  a  mere  colorable  invasion 
of  the  first. 


1  Sargent  v.  Lock  Co.  114  U.  S.  Collins  Co.  9  Fed.  Rep.  905,  1882; 

86,  1884;  Crawford  «.  Heysinger,  123  Henderson  v.  Stove  Co.  2  Bann.  & 

U.  8.  606,  1887;  New  York  Belting  Ard.  608,  1877 ;  Palmer  t.  Catling 

&  Packing  Co.  T.  Sibley,  15  Fed.  Gun  Co.  8  Fed.  Rep.  513,  1881. 

Rep.  389,  1883.  *  Carlton  v.   Bokee,   17  Wallace, 

*  Hartshorn  t>.  Barrel  Co.  119  U.  463,  1873;  Washing-Machine  Co.  t. 

S.  679,  1886.  Tool  Co.  20  Wallace.  342,  1873. 

8  Fuller  v.  Yentzer.  94  U.  S.  288,  •  McCormick  v.  Talcott,  20  How- 

1876 ;  Parham  v.  Buttonhole  Co.  4  ard,  402,  1857. 

Fisher,  468. 1871;  Hitchcock  v.  Tre-  •  Railway  Co.  t>.  Sayles,  97  U.  S. 

maine,  4  Fisher,  508,  1871;  Coes  v.  554,  1878. 


144  LETTERS   PATENT.  [CHAP/ VII. 

The  doctrine  of  the  Sayles  case  is  as  follows.  If  one  in- 
ventor, in  a  particular  art,  precedes  all  the  rest,  and  strikes 
out  something  which  underlies  all  that  they  produce,  he 
subjects  them  to  tribute.  But  if  the  advance  toward  the 
thing  desired,  is  gradual  so  that  no  one  can  claim  the  com- 
plete whole,  then  each  inventor  is  entitled  to  the  specific 
form  of  device  which  he  produced,  and  every  other  inventor 
is  entitled  to  his  own  specific  form,  so  long  as  it  differs 
from  those  of  his  competitors  and  does  not  include  theirs. 

The  meaning  of  these  two  cases  seems  to  be  that  every 
inventor  is  entitled  to  claim  whatever  he  was  the  first  to 
invent.  If  A.  B.  is  the  first  to  invent  a  machine  to  perform 
a  particular  work,  and  if  his  machine  is  substantially  in- 
corporated into  subsequent  machines  which  do  that  work, 
then  A.  B.  is  entitled  to  such  a  construction  of  his  patent 
as  will  cover  those  later  machines ;  but  if  C.  D.  is  a  mere 
improver  on  A.  B.'s  machine,  C.  D.  is  not  entitled  to  such  a 
construction  of  his  patent,  as  will  cover  the  machines  of 
still  later  inventors,  who  have  improved  on  A.  B.'s  machine 
in  a  different  manner.  It  follows  from  these  doctrines  that 
C.  D.'s  patent  must  be  construed  in  the  light-  of  A.  B.'s  ma- 
chine, and  indeed  of  every  other  similar  and  older  structure  ; 
which  is  the  same  thing  as  saying  that  every  patent  must 
be  construed  in  the  light  of  the  state  of  the  art,  at  the  time 
the  invention  it  covers  was  produced. 

§  185.  "  A  patent  should  be  construed  in  a  liberal  spirit 
to  sustain  the  just  claims  of  the  inventor.  This  principle 
is  not  to  be  carried  so  far  as  to  exclude  what  is  in  it,  or  to 
interpolate  anything  which  it  does  not  contain.  But  liberal- 
ity, rather  than  strictness,  should  prevail  where  the  fate  of 
the  patent  is  involved,  and  the  question  to  be  decided  is 
whether  the  inventor  shall  hold  or  lose  the  fruits  of  his 
genius  and  his  labors."  '  "  Patents  for  inventions  are  to 
receive  a  liberal  construction,  and  under  the  fair  application 
of  the  rule,  ut  res  magis  valeat  quampereat,  are,  if  practicable, 
to  be  so  interpreted  as  to  uphold  and  not  to  destroy  the 

1  Rubber  Co.  t>.  Goodyear,  9  Wallace.  788,  1869. 


CHAP.  VII.]  LETTERS   PATENT.  145 

right  of  the  inventor." '  "  While  it  is  undoubtedly  true, 
that  a  patentee  may  so  restrict  his  claim  as  to  cover  less 
than  what  he  invented,  or  may  limit  it  to  one  particular 
form  of  a  machine,  excluding  all  other  forms,  though  they 
also  embody  his  invention,  yet  such  an  interpretation  should 
not  be  put  upon  his  claim  if  it  can  fairly  be  construed 
otherwise."11 

These  are  the  declarations  of  the  Supreme  Court  relevant 
to  the  proper  liberality  to  be  observed  in  construing  pat- 
ents. That  liberality  as  often  shows  itself  in  a  narrow  con- 
struction as  in  a  broad  one  ;  for  narrow  construction  may  be 
as  necessary  to  establish  the  novelty  of  a  patent,  as  a 
broad  construction  is  to  lay  the  foundation  for  proof  of  its 
infringement.  Therefore  when  it  becomes  necessary  to 
construe  a  claim  narrowly,  in  order  that  its  novelty  may  not 
be  negatived  by  the  prior  art,  courts  will  give  such  a  nar- 
row construction,  if  they  can  do  so  consistently  with  the 
language  of  the  claim  and  of  the  description.3 

§  186.  "  It  is  well  known  that  the  terms  of  the  claim  in 
letters  patent  are  carefully  scrutinized  in  the  Patent  Office. 
Over  this  part  of  the  specification  the  chief  contest  generally 
arises.  It  defines  what  the  office,  after  a  full  examination 
of  previous  inventions  and  the  state  of  the  art,  determines 
the  applicant  is  entitled  to.  The  courts,  therefore,  should 
be  careful  not  to  enlarge,  by  construction,  the  claim  which 
the  Patent  Office  has  admitted,  and  which  the  patentee  has 
acquiesced  in,  beyond  the  fair  interpretation  of  its  ternis." ' 
"  As  patents  are  procured  ex  parte,  the  public  is  not  bound 
by  them,  but  the  patentees  are.  And  the  latter  cannot 
show  that  their  invention  is  broader  than  the  terms  of  their 
claim  ;  or,  if  broader,  they  must  be  held  to  have  surrendered 
the  surplus  to  the  public."* 

1  Tun-ill  «.  Railroad  Co.  1  Wai-  600,  1882;  Stevenson  t>.  Magowan, 

lace,  491,  1863  31  Fed.  Rep.  826,  1887. 

*  Winanst).  Denmead,  15  Howard,  4  Burns  v.  Meyer,  100  U.  S.  672, 

330,  1853.  1879. 

3  Klein  v.  Russell,  19  Wallace,  433,  *  Keystone  Bridge  Co.  v.  Iron  Co. 

1873;  Jones  t.  Barker,  11  Fed.  Rep.  95  U.  S.  278,  1887. 


146  LETTERS   PATENT.  [CHAP.  VII. 

These  are  the  declarations  of  the  Supreme  Court  relevant 
to  the  proper  strictness  to  be  observed  in  construing  patents. 
Therefore,  when  a  claim  clearly  covers  a  combination  of 
certain  elements,  it  cannot,  by  construction,  be  so  altered  as 
to  cover  more  elements,  so  as  not  to  be  invalid,1  or  to  cover 
fewer  elements,  and  thus  be  rendered  more  likely  to  be  in- 
fringed.2 So  also,  a  claim  for  a  process,  substantially  as 
described,  cannot  be  construed  to  cover  an  incidental  process 
set  forth  in  the  description,  but  merely  recommended  there 
instead  of  being  required  or  being  stated  to  be  essential 
to  the  principal  process  of  the  patent.3 

§  187.  Letters  patent  may  be  construed  in  the  light  of  the 
contemporaneous  intention  of  the  inventor  ;  and  to  this 
end  recourse  may  be  had  to  the  files  of  the  application 
papers,  to  see  what  changes  were  made  in  the  description 
and  claims  while  the  application  was  pending  in  the  Patent 
Office.4 

§  188.  The  laws  which  were  in  force  when  any  particular 
patent  was  granted,  are  the  laws  according  to  which  it  must 
be  construed  ;5  and  a  special  statute  relevant  to  any  partic- 
ular patent,  is  engrafted  on  the  general  patent  statutes,  and 
must  be  construed  harmoniously  with  them.8 

§  189.  Questions  of  construction  are  questions  of  law  for 
the  judge,  not  questions  of  fact  for  the  jury.7  As  it  cannot 
be  expected,  however,  that  judges  will  always  possess  the 
requisite  knowledge  of  the  meaning  of  the  terms  of  art  or 
science  used  in  letters  patent,  it  often  becomes  necessary 
that  they  should  avail  themselves  of  the  light  furnished  by 
experts  relevant  to  the  significance  of  such  words  and 

1  Stiles  v.  Rice,  29  Fed.  Rep.  445,  Ard.  639,  1875;  Bate  Refrigerating 

1887.  Co.  v.  Eastman,  24  Fed.  Rep.  649, 

*  Shepard  t>.  Carrigan,  116  TJ.   S.  1885. 

597,  1885;  Sutler®.  Robinson,  119 U.  5McClurg  v.  Kingsland,  1  How- 

S.  541, 1886;  Le  Fever  v.  Remington,  ard,  202,  1843. 

13  Fed.  86,  1882.  6  Evans  ®.  Eaton,  3  Wheaton,  454, 

3  Sewall  v.  Jones,  91  U.    S.   185,  1818;    Bloomer  v.    McQuewan,   14 
1875;  Holliday  «.  Pickhardt,  29  Fed.  Howard,  539,  1852. 

Rep.  858,  1887.  7  Winans  v.  Deumead,  15  Howard 

4  Trader  v.  Messmore,  1  Bann.  &      330,  1853. 


CHAP.  VII.]  LETTERS   PATENT.  147 

phrases.1  The  judges  are  not  however  obliged  to  blindly 
follow  such  testimony.  They  may  disregard  it,  if  it  appears 
to  them  to  be  unreasonable.2  While  the  testimony  of  ex- 
perts, relevant  to  the  meaning  of  particular  words  or  phrases 
in  letters  patent,  is  to  this  extent  admissible  ;  such  testimony 
is  wholly  inadmissible  relevant  to  the  construction  of  the 
letters  patent  as  a  whole.3 

§  190.  In  the  absence  of  contrary  evidence,  the  invention 
covered  by  a  particular  letters  patent,  is  presumed  to  be 
identical  with  that  covered  by  the  application  on  which 
those  letters  patent  were  granted.4 

§  191.  All  persons  are  bound  to  take  notice  of  the  contents 
of  all  letters  patent  of  the  United  States,  because  those  let- 
ters patent  are  matters  of  public  record.5 

1  Loom  Co.  v.  Higgins,  105  U.  S.  252,  1853. 

580,  1881.  4  Loom  Co.  v.  Higgins,  105  U.  S. 

*  Winans  v.  Railroad  Co.  21  How-  580,  1881. 

ard,  88,  1858.  5  Boyden  v.  Burke,  14  Howard, 

3  Corning  «.  Burden,  15  Howard,  575,  1852. 


CHAPTER  VIII. 


DISCLAIMERS. 


192.  Statutory  authorization  of  dis- 
claimers. 

193.  Statutory   prescriptions,    rele- 
vant to  disclaimers. 

194.  Errors  which  justify  disclaim- 
ers. 

195.  Mistakes  of  fact,   relevant  to 
novelty. 

196.  Mistakes  of  law,  relevant  to  in- 
vention. 

197.  Claims  void  for  want  of  utility. 

198.  Combination  claims. 

199.  Compound  claims. 

200.  Immaterial  claims. 

201.  Reissue  claims. 


202.  Fraudulent  or  deceptive  inten- 
tion. 

203.  Effect  of  unreasonable  delay  to 
file  a  disclaimer. 

204.  Beginning  of  unreasonable  de- 
lay to  file  a  disclaimer. 

205.  Costs,  where  a  necessary  dis- 
claimer has  not  been  filed. 

206.  Extent  of  disclaimant's  interest. 

207.  Construction  of  letters  patent 
after  a  disclaimer. 

208.  Disclaimers  filed  pending  liti- 
gation. 

209.  Disclaimers  demanded  by  ju- 
dicial decisions. 


§  192.  THE  statutory  provisions  relevant  to  disclaimers 
originated  in  1837,  and  have  never  been  substantially 
changed.  Sections  7  and  9  of  the  Patent  Act  of  that  year,1 
embodied  those  provisions ;  and  those  sections  continued 
in  force  till  July  8,  1870,  when  they  were  substantially  re- 
enacted  as  Sections  54  and  60  of  the  Consolidated  Patent 
Act  of  that  date.3  In  1874,  the  latter  sections  were,  in  their 
turn,  re-enacted,  without  any  material  change,  as  Sections 
4917  and  4922  of  the  Kevised  Statutes.  It  would  have  been 
better  statute  writing,  if  those  two  sections  had  always  been 
blended  together  into  one  clear  and  comprehensive  para- 
graph. Referring  to  the  same  subject,  and  standing,  as 
they  always  have,  in  the  same  statute,  they  must  undoubt- 


1  5  Statutes  at  Large,  Ch.  45,  Sec- 
tions 7  and  9,  p.  193. 
8  16  Statutes  at  Large,  Ch.  230, 


Sections  54  and  60,  p.  206 ;  Taylor 
v.  Archer,  8  Blatch.  318,  1871. 

148 


CHAP.  VIII.]  DISCLAIMERS.  149 

edly  be  construed  together;1  and  the  law  they  embody 
must  be  set  forth,  by  extracting  from  both  sections,  all  the 
material  meaning  of  both,  and  by  incorporating  that  mean- 
ing, together  with  the  case  law  of  the  subject,  into  one 
systematic  explanation.  Let  that  therefore  be  the  present 
attempt. 

§  193.  Whenever,  through  inadvertence,  accident,  or  mis- 
take, and  without  any  fraudulent  or  deceptive  intention,  a 
patentee  has,  in  his  specification,  claimed  materially  more 
than  that  of  which  he  was  the  first  inventor,  his  patent  shall 
be  valid  for  whatever  is  justly  his  own ;  and  every  such 
patentee,  his  executors,  administrators,  or  assigns,  whether 
of  the  whole  or  any  sectional  interest  in  the  patent,  may 
maintain  a  suit  at  law  or  in  equity,  for  the  infringement  of 
such  part,  if  it  is  a  material  and  substantial  part  of  the 
thing  patented,  and  is  definitely  distinguishable  from  the 
parts-  claimed  without  right.  But  in  every  such  case,  in 
which  a  judgment  or  decree  shall  be  rendered  for  the 
plaintiff,  no  costs  shall  be  recovered,  unless  the  proper 
disclaimer  was  entered  in  the  Patent  Office,  before  the 
commencement  of  the  suit.  But  no  patentee  shall  be  en- 
titled to  maintain  any  such  suit,  if  he  has  unreasonably 
neglected  or  delayed  to  enter  a  disclaimer.  And  any  such 
patentee,  his  heirs  or  assigns,  whether  of  the  whole  or  of 
any  sectional  interest  therein,  may,  on  payment  of  the  fee 
required  by  law,  make  disclaimer  of  such  parts  of  the  sub- 
ject-matter of  the  patent,  as  he  shall  not  choose  to  longer 
claim,  stating  therein  the  extent  of  his  interest  in  such 
patent.  Such  disclaimer  shall  be  in  writing,  attested  by 
one  or  more  witnesses,  and  recorded  in  the  Patent  Office, 
and  shall  thereafter  be  considered  a  part  of  the  original 
specification,  to  the  extent  of  the  interest  possessed  by  the 
claimant  and  by  those  claiming  under  him  after  the  record 
thereof.  But  no  such  disclaimer  shall  affect  any  action 
pending  at  the  time  of  its  being  filed,  except  so  far  as  may 

1  Hailes  T.  Stove  Co.  123  U.  S.  588,  1887. 


150  DISCLAIMERS.  [CHAP.  VIII. 

relate  to  the  question  of  unreasonable  neglect  or  delay  in 
filing  it.1 

§  194.  The  primary  fact  which  brings  the  law  stated  in 
the  last  section  into  play,  is  the  claiming  by  a  patentee  of 
materially  more  in  his  patent  than  he  was  entitled  to  claim.11 
Such  errors  may  spring  from  inadvertence.  That  is  to  say, 
they  may  spring  from  failure,  on  the  part  of  the  writer  of 
the  claims,  to  exercise  proper  care  in  penning  them.  So 
also,  they  may  arise  from  accident :  from  chances  against 
which  even  diligent  care  cannot  always  guard.  But  mis- 
take is  the  most  common  source  of  such  errors ;  and  such 
errors  may  arise  from  mistake  of  fact  or  from  mistake  of 
law. 

§  195.  Mistakes  of  fact,  relevant  to  how  much  of  a  de- 
scribed process,  machine,  or  manufacture  was  first  invented 
by  its  patentee,  frequently  follow  from  lack  of  full  informa- 
tion touching  what  wras  previously  invented  by  others  in  the 
same  department  of  the  useful  arts.  Litigation  may  alone 
disclose  the  fact  that  the  patentee's  claims  are  too  numerous 
or  too  broad  to  be  consistent  with  novelty.  Whenever  this 
occurs,  it  is  clear  that  the  patentee  ought  no  longer  to  ap- 
pear to  hold  an  exclusive  right  to  anything  which  he  was 
not  the  first  to  invent.  To  this  end,  the  statute  provides 
that  he  must  disclaim  that  part,  within  a  reasonable  time, 
or,  in  default  thereof,  must  suffer  the  statutory  conse- 
quences. On  the  other  hand  it  is  equally 'clear,  that  if  the 
patentee  is  willing  to  eliminate  from  his  claims,  everything 
which  later  information  shows  had  been  invented  before 
him,  he  ought  to  be  allowed  to  retain  his  exclusive  right  to 
the  residue.  To  this  end,  the  statute  provides,  that  if  within 
a  reasonable  time,  he  disclaims  what  was  another's,  he  shall 
be  enabled  to  enforce  his  patent  as  far  as  it  covers  what 
was  his  own  invention.  But  a  disclaimer  cannot  confine 
a  claim  to  ground  which  does  not  appear  in  the  patent  to 
constitute  an  invention  ;  even  where  that  ground  is  narrower 
than  that  which  was  originally  claimed  in  the  patent. 

1  Revised  Statutes,  Sections  4917  s  Hailes  «.  Stove  Co.  123  U.  8. 
and  4922  blended  together.  588,  1887. 


CHAP.  VIII.]  DISCLAIMERS.  151 

§  196.  A  mistake  of  law,  which  consists  in  claiming  some- 
thing not  patentable,  may  also  be  remedied  by  disclaimer.' 
The  law  which  requires  and  permits  a  patentee  to  disclaim, 
is  not  penal  but  remedial.  It  is  intended  for  the  protection 
of  the  patentee,  as  well  as  for  the  protection  of  the  public. 
The  evil  to  be  remedied  is  the  same,  where  a  patentee  has 
claimed  more  than  he  ought,  whether  that  result  sprang 
from  the  fact  that  another  invented  it  before  him,  or  sprang 
from  the  fact  that  what  he  produced  was  not  an  invention 
at  all.  For  this  reason,  the  Supreme  Court  held  that  the 
eighth  claim  of  Morse  might  be  disclaimed,  after  having 
been  held  void  for  want  of  patentability,  with  the  same 
effect  as  though  it  had  been  held  void  for  want  of  novelty. 
The  same  reason  would  also  permit  a  patentee  to  disclaim 
any  claim  which  is  void  for  want  of  invention.  Indeed  the 
statute  expressly  applies  to  such  a  case,  for  no  man  can  be 
the  first  inventor  of  anything  which  is  not  an  invention. 
He  may  be  its  first  discoverer,  if  it  is  a  law  of  nature,  or  its 
first  constructor,  if  it  is  a  product  of  mere  mechanical  skill, 
but  its  first  inventor  he  cannot  be. 

§  197.  There  appears  to  be  no  warrant  in  the  statute,  for 
disclaiming  any  claim  which  is  void  for  want  of  utility,  and 
for  no  other  cause.  An  inventor  of  a  new  thing  may  gener- 
ally ascertain  its  character  in  point  of  utility  before  apply- 
ing for  a  patent.  If  he  can  do  so,  he  ought  to  do  so,  and 
thus  shield  the  public  from  the  waste  of  time  involved  in 
examining  and  judging  useless  contrivances.  Where  a 
patent  has  but  one  claim,  and  where  the  matter  covered  by 
that  claim  is  useless,  no  disclaimer  could  make  that  patent 
valid.  Where  a  part  only  of  the  claims  of  a  patent  are 
void  for  want  of  utility,  and  for  no  other  cause,  the  void 
claims  are  not  injurious  to  the  valid  ones,  and  therefore  no 
disclaimer  is  needed  in  any  such  case.  Where  a  claim  pur- 
ports to  cover  a  thing  constructed  in  either  of  several  ways, 
and  where  that  thing  is  useless  if  constructed  in  one  of 
those  ways,  and  useful  if  constructed  in  another,  the  claim 

1  O'Reilly  v.  Morse,  15  Howard,  120,  1853. 


152  DISCLAIMEES.  [CHAP.  VIII. 

cannot  be  limited  to  the  useful  construction,  by  means  of 
any  disclaimer ;  for  it  is  not  the  office  of  a  disclaimer  to  re- 
form or  to  alter  the  description  or  claim  of  an  invention.1 
Its  function  is  to  eliminate  from  letters  patent  all  claims  for 
inventions  which  were  not  new  with  the  patentee,  and  all 
claims  for  things  which  were  not  inventions  with  him.2 

§  198.  The  right  to  file  disclaimers  is  expressly  limited  to 
cases  where  the  actual  invention  of  the  patentee  is  a  material 
and  substantial  part  of  the  thing  patented.3  Parts  of  com- 
binations do  not  come  within  this  category,  for  a  combina- 
tion is  an  entirety  ;  and  if  one  of  the  elements  is  given  up, 
the  thing  claimed  disappears.  The  disclaimer  provisions 
cannot  be  made  to  modify  and  thereby  save  combination 
claims,  for  unless  the  combination  is  maintained  the  whole 
of  the  invention  fails.4 

§  199.  The  statutes  also  provide,  that  in  order  to  save  a 
patent  by  a  disclaimer,  the  part  retained  must  be  definitely 
distinguishable  from  the  part  eliminated.  It  does  not  fol- 
low, however,  that  each  claim  of  a  patent  must  be  wholly 
disclaimed,  or  wholly  retained.  On  the  contrary,  there  are 
cases  where  two  or  more  inventions  are  covered  by  one 
claim ;  and  in  such  cases,  a  disclaimer  may  be  made  to  ex- 
punge one  of  those  inventions  from  that  claim,  without  dis- 
turbing the  others.5 

In  the  first  of  the  cases  just  cited,  the  claim  was  :  "  The 
forming  of  packing  for  pistons  or  stuffing  boxes  of  steam 
engines,  and  for  like  purposes,  out  of  saturated  canvas,  so 
cut  that  the  thread  or  warp  shall  run  in  a  diagonal  direc- 
tion from  the  line  or  centre  of  the  roll  of  packing,  and  rolled 
into  form,  either  in  connection  with  the  india-rubber  core, 
or  other  elastic  material,  or  without,  as  herein  set  forth." 
Litigation  showed  that  such  a  thing,  without  a  core,  was 

1  Hailes  v.  Stove  Co.  123  U.  S.      and  4922. 

587,   1887;    White  «.  Mfg.  Co.  24  4  Vance  v.  Campbell,  1  Black.  429, 

Off.  Gaz.  205,  1883.  1861. 

2  Cartridge  Co.  v.  Cartridge  Co.  8  Tuck  «.  Brainbill,  6  Blatch.  95, 
112  U.  S.  642,  1884.  1868;   Taylor  v.  Archer,  8  Blatch. 

8  Revised  Statutes,  Sections  4917      318,  1871. 


CHAP.   VIII.]  DISCLAIMERS.  153 

old,  and  the  patentee  therefore  entered  a  disclaimer  to  that 
part  of  the  claim  which  covered  the  packing  without  the 
core.  Justice  BLATCHFOED  held  that  disclaimer  to  be  proper, 
and  to  be  effectual. 

In  the  second  case  cited,  the  claim  was,  "  The  use  and 
application  of  glue,  or  glue  composition,  in  the  tubing,  sub- 
stantially as  described,  for  the  purpose  of  making  the  flex- 
ible tubing  gas  tight,  whether  of  cloth  or  rubber  or  other 
gum."  During  the  pendency  of  the  suit,  and  after  consider- 
able testimony  had  been  taken,  a  disclaimer  was  entered  to 
that  part  of  the  claim  of  the  patent  which  claimed  as  an 
improvement  in  flexible  tubing  for  illuminating  gas,  the  use 
and  application  of  glue ;  thereby  limiting  the  claim  to  the 
use  and  application  of  glue  composition  in  the  tubing,  sub- 
stantially as  described.  This  disclaimer  was  also  upheld 
by  the  same  distinguished  chancellor  who  upheld  the  dis- 
claimer in  the  other  case. 

§  200.  There  is  one  difference  between  the  two  disclaimer 
sections,  of  the  Revised  Statutes,  which  it  is  now  requisite 
to  mention.  Section  4917  contemplates  disclaimers  as  be- 
ing proper  whenever  a  patentee  has  claimed  more  than 
that  of  which  he  was  the  first  inventor ;  while  Section  4922 
attends  only  to  cases  wherein  the  excess  is  a  material  or 
substantial  part  of  the  thing  patented.  This  qualification 
should  be  inserted  in  the  two  sections,  as  construed  together, 
because  Section  4922  is  the  only  one  that  prescribes  any 
evil  result  from  a  failure  to  disclaim.  Neither  section  visits 
any  infliction  on  any  patentee,  for  omitting  to  disclaim  any- 
thing which  is  an  immaterial  part  of  the  thing  patented. 
If,  therefore,  a  patentee  omits  to  disclaim  such  a  part  when 
he  discovers  it  to  have  been  known  before  his  invention 
thereof,  or  learns  that  it  is  not  an  invention  at  all,  he  thereby 
loses  no  right,  and  incurs  no  inconvenience.1  To  file  a  dis- 
claimer, in  such  a  case,  is  an  act  which  is  at  once  harmless 
and  unnecessary. 

§  201.  Eeissue  patents,  as  well  as  original  patents,  are 

1  Hall  v.  Wiles,  2  Blatch.  199,1851;  Peek  v.  Frame,  5  Fisher,  212,  1871. 


154  DISCLAIMERS.  [CHAP.  VIII. 

entitled  to  the  benefits  of  the  law  relevant  to  disclaimers  ; 
and  that  too,  even  where  the  matter  disclaimed  was  not 
claimed  in  the  original,  but  only  in  a  reissue  granted  upon 
its  surrender.1  But  no  claim  which  was  in  an  original 
patent,  and  is  absent  from  a  reissue  thereof,  can  be  re- 
claimed by  a  disclaimer  of  the  changes  made  by  the  re- 
issue.2 Where  an  original  patent  was  surrendered,  and 
then  reissued  in  several  divisions ;  that  is  to  say,  where 
several  reissue  patents  were  granted  for  separate  inventions 
described  in  an  original  patent,  a  suit  based  upon  one  of 
those  divisions  will  be  unaffected  by  the  fact  that  a  claim 
in  another  division,  is  invalid  for  want  of  novelty,  or  for 
want  of  invention.  The  statute  relevant  to  disclaimers  has 
no  application  to  such  eases.3 

§  202.  Fraudulent  or  deceptive  intention,  if  it  existed  on 
the  part  of  a  patentee,  when  claiming  materially  more  than 
that  of  which  he  was  the  first  inventor,  or  when  claiming 
that  which  was  not  patentable,  will  rightly  prevent  him 
from  receiving  any  benefit  from  a  disclaimer.  This  statu- 
tory provision  is  in  harmony  with  the  principles  of  equity  : 
a  system  which  always  declines  to  extract  persons  from 
trouble  which  arose  from  their  own  moral  turpitude. 

§  203.  The  statement  in  Section  4917,  that  under  the  cir- 
cumstances therein  mentioned,  a  patentee's  patent  shall  be 
valid  as  to  all  that  part  of  the  invention  which  is  truly  and 
justly  his  own,  is  to  be  construed  in  connection  with  the 
provision  in  Section  4922,  that  the  patentee  shall  not  be 
entitled  to  recover  in  any  suit,  if  he  unreasonably  neglects 
or  delays  to  enter  a  disclaimer.  When  so  construed,  the  two 
sections  enact  that  where  a  patentee  claims  materially  more 
than  that  which  he  was  the  first  to  invent,  his  patent  is  void, 
unless  he  has  preserved  the  right  to  disclaim  the  surplus, 

1  O'Reilly  v.  Morse,  15  Howard,  Rep.  567,  1882. 

62,  1853;  Gage  «.  Herring  107  U.  8.  *  McMurray  «.  Mallory,  111  U.  S. 

646,    1882;  Yale  Lock  Co.   v.  Sar-  109,  1883. 

gent,   117  U.   S.   553,   1886;  Schil-  3  Elastic  Fabrics  Co.  v.  Smith,  100 

linger  v.   Gunther,   17  Blatch.  69,  U.  S.  Ill,  1879. 
1879;  Tyler  «.   Galloway,   12  Fed. 


CHAP.   VIII.]  DISCLAIMERS.  155 

and  that  he  may  fail  to  preserve  that  right,  by  unreasonable 
neglect  or  delay  to  enter  a  disclaimer  in  the  Patent  Office. 

§  204.  Neglect  or  delay  -to  file  a  necessary  disclaimer,  be- 
gins when  knowledge  is  brought  home  to  the  patentee,  that 
the  inventor  upon  whose  account  the  patent  was  granted, 
was  not  the  first  inventor  of  a  particular  thing  claimed  in 
the  patent  and  material  to  the  subject  of  the  patent  as  a 
whole.1  If,  however,  there  is  reasonable  ground  for  differ- 
ence of  opinion  relevant  to  the  question  whether  the  prior 
patent,  or  the  prior  process,  or  the  prior  thing,  so  brought 
home  to  the  knowledge  of  the  patentee,  really  negatives  the 
novelty  of  anything  claimed  by  him  ;  then  unreasonable 
delay  to  file  a  disclaimer  will  not  begin  until  that  question 
is  finally  settled  by  the  courts.2  Even  a  still  further  short 
delay  is  not  fatal  to  the  right  to  disclaim  ; 3  and  if  the  patent 
has  expired  when  the  occasion  for  a  disclaimer  is  estab- 
lished, no  disclaimer  can  be  filed  or  is  necessary.4  The 
question  whether  the  delay  to  enter  a  disclaimer,  in  a  par- 
ticular case,  was  or  was  not  unreasonable,  is  a  mixed  ques- 
tion of  law  and  fact,  to  be  decided  by  the  jury  in  accordance 
with  proper  instructions  from  the  court.5  In  the  case  of 
Seymour  v.  McCormick,0  the  Supreme  Court,  when  speak- 
ing of  the  question  of  the  necessity  for  a  disclaimer  in  that 
case,  and  of  the  question  of  unreasonable  delay  in  enter- 
ing one,  said :  "  Under  the  circumstances,  the  question  is 
one  of  law."  The  peculiar  collocation  of  the  paragraph, 
has  caused  some  courts,7  to  suppose  that  the  question  thus 
characterized,  was  the  question  of  delay  ;  but  really  it  must 

1  O'Reilly  v.  Morse,  15  Howard,      U.  S.  553,  1885. 

121,  1853;    Singer  ».  Walmsley,  1  5  Brooks  v.  Jenkins,   3  McLean, 

Fisher,  558,  1860;  Parker  v.   Stiles  449,   1844;  Washburn   v.   Gould,    3 

5  McLean,  44,  1849.  Story,  122,  1844;  Burden  v.  Corn- 

2  Seymours.  McCormick,  19  How-  ing,  2  Fisher,  477,  1864. 

ard,  106,   1856;  Potter  W.Whitney,  '  Seymour®.  McCormick,  19 How- 

1  Lowell,  87,  1866;  Hill  «.  Biddle,  ard,  106,  1856. 

27  Fed.  Rep.  561,  1P86.  7  Singer  v.  Walmsley,  1  Fisher, 

3  Kittle  «.  Hall,  30  Fed.  Rep.  39,  558,  1860;  Parker  v.   Stiles,  5  Mc- 
1887.  Lean,  44,  1849. 

4  Yale  Lock  Co.  v.  Sargent,  117 


156  DISCLAIMERS.  [CHAP.  VIII. 

^    L  * 

have  been  the  question  of  necessity.  The  latter  depended 
wholly  upon  the  construction  of  the  patent,  and  was  there- 
fore a  question  of  law.  Whether  or  not  a  particular  in- 
stance of  delay  was  unreasonable,  must  largely  depend  upon 
the  circumstances  which  surrounded  the  person  chargeable 
therewith.  What  those  circumstances  were  is  a  question  of 
fact.  Whether  they  constituted  an  excuse  for  the  delay,  is 
a  question  of  law.  Whether  or  not  a  particular  instance  of 
delay  to  enter  a  necessary  disclaimer,  was  unreasonable,  is 
therefore  a  mixed  question  of  law  and  of  fact. 

§  205.  No  costs  can  be  recovered  in  any  infringement 
suit,  the  final  decision  of  which  shows  a  necessity  for  a  dis- 
claimer, unless  such  a  disclaimer  was  entered  in  the  Patent 
Office  before  the  commencement  of  the  suit.1  This  rule 
applies  even  to  cases  where  the  delay  to  enter  the  dis- 
claimer was  not  unreasonable.2  But  a  verdict  on  all  the 
claims  of  a  patent,  entitles  the  plaintiff  to  costs,  even  if, 
after  that  verdict,  he  files  a  disclaimer  to  one  or  more  of 
the  claims  of  that  patent.3 

Judge  LOWELL  has  said  that  where  a  plaintiff  sues  on  a 
part  of  the  claims  of  his  patent  only,  the  defendant  will  not 
be  permitted  to  raise  any  issue  relevant  to  the  validity  of 
any  other  claim,  with  intent  to  show  a  necessity  for  a  dis- 
claimer, and  thus  to  escape  costs.4  His  Honor  based  this 
opinion  on  the  fact  that  more  expense  might  be  incurred  in 
litigating  such  a  collateral  issue,  than  would  be  justified  by 
the  amount  of  the  costs  depending  upon  its  decision.  But 
general  rules  of  law  can  hardly  be  based  on  considerations 
of  what  is  expedient  in  a  part  only  of  the  cases  to  which 
those  rules  purport  to  apply.  It  may  happen  that  the 
costs  involved  in  a  particular  litigation  are  large,  while  the 
expense  involved  in  proving  a  necessity  for  a  disclaimer  of 

1  Revised  Statutes,  Section  4922;  121,  1853;  Yale  Lock  Co.®.  Sargent, 

Reed  v.  Cutter,  1  Story,  591,  1841;  117  U.  S.  553,  1885. 
Burdett  V.  Estey,  5  Bann.  &  Ard.          3  Peek  v.  Frame,  5  Fisher,   212, 

309, 1880;  Proctor  v.  Brill,  16  Fed.  1871. 
Rep.  791 ,  1883.  4  American    Bell  Telephone  Co. 

*  O'Reilly  v.  Morse,  15  Howard,  v.  Spencer,  8  Fed.  Rep.  512,  1881. 


CHAP.  VIII.]  DISCLAIMERS.  157 

some  one  claim  of  the  patent  is  small.  The  difference  be- 
tween the  two  sums  may  sometimes  be  measured  by  thou- 
sands of  dollars.  A  judgment  or  a  decree  may  be  largely 
lessened  and  justly  lessened,  if  a  defendant  is  permitted  to 
prove  a  necessity  for  a  disclaimer  of  a  claim  not  sued  upon. 
In  view  of  these  considerations,  it  is  possible  that  the  law 
will  finally  be  settled  otherwise  than  as  Judge  LOWELL'S  re- 
mark would  seem  to  forecast. 

§  206.  Disclaimers  are  required  to  state  the  extent  of  the 
interest  which  is  held  by  the  disclaimant  in  the  patent  in- 
volved.1 If,  however,  the  disclaimant  is  the  original  pat- 
entee, and  the  disclaimer  states  that  fact,  and  is  silent 
respecting  any  transfer  of  any  part  of  it,  the  fair  implication 
is  that  he  still  owns  the  whole,  and  that  implication  is  a 
sufficient  statement  of  the  interest  of  the  patentee.2  So 
also,  if  an  executor  or  administrator,  in  whose  name  a 
patent  has  been  extended,  states  in  his  disclaimer,  that  he 
is  the  patentee,  and  refers  to  the  patent  as  showing  his 
interest,  that  is  a  sufficient  statement  of  his  interest  in  the 
patent.3  But  if  one  only,  of  several  joint  owners  or  owners 
in  common,  of  a  patent,  should  file  a  disclaimer,  no  other 
owner  could  avail  himself  of  its  benefits,  nor  could  it  affect 
a  suit  brought  by  all  the  owners  jointly.4 

§  207.  The  construction  of  a  patent  after  a  disclaimer  has 
been  properly  entered,  must  be  the  same  that  it  would  have 
been  if  the  matter  so  disclaimed  had  never  been  claimed.5 
No  disclaimer,  in  order  tft  be  effectual,  needs  to  eliminate 
anything  from  the  description  ;  though  no  harm  will  follow 
from  such  elimination  if  it  is  confined  to  matter  which  is 
disclaimed,  and  which  is  not  needed  to  show  the  nature  of 
the  invention  which,  after  disclaimer,  the  patent  continues 
to  cover." 

§  208.  Disclaimers  may  be  filed  pending  a  suit  on  the 

1  Revised  Statutes,  Section  4917.  1840. 

*  Silsby  v.  Foote,  14  Howard,  221,  5  Dunbar  v.  Myers,  94  U.  S.  187, 

1852.  1876. 

3  Brooks  v.  Jenkins,  3  McLean,  6  Schillinger  0.  GuntLer,17Blatch. 

432.  1844.  '  69,  1879. 

4Wyeth  v.   Stone,  1  Story,  294, 


158  DISCLAIMERS.  [CHAP.  VIII. 

patent,1  but  in  that  event,  the  plaintiff,  even  if  he  prevails 
in  the  suit,  can  recover  no  costs/  The  filing  of  a  dis- 
claimer, at  that  stage  of  affairs,  does  not  affect  the  pend- 
ing action,  except  so  far  as  it  may  bear  upon  the  question 
whether  or  not  there  was  unreasonable  delay  before  filing 
it."  That  question  is  an  open  one,  until  decided  on  its 
merits,  regardless  of  whether  the  disclaimer  was  filed  before 
or  after  the  bringing  of  the  suit.4  The  sooner  a  necessary 
disclaimer  is  filed,  the  less  danger  exists  that  the  preceding 
delay  will  be  held  unreasonable.  For  that  reason,  and  for 
that  reason  alone,  it  is  sometimes  wiser  to  file  a  disclaimer 
pending  a  suit,  than  to  wait  till  the  case  is  heard,  or  still 
longer,  till  it  is  decided. 

§  209.  An  important  question  arises,  when  a  Circuit 
Court,  before  any  disclaimer  has  been  filed,  decides  that  a 
part  of  the  claims  of  the  patent  in  suit  are  valid,  and  have 
been  infringed  by  the  defendant,  while  another  part  are  void 
for  want  of  novelty,  or  for  want  of  invention,  and  ought 
therefore  to  be  disclaimed.  Ought  the  chancellor,  in  such 
a  case,  to  enter  a  decree  for  an  injunction  and  an  account 
on  the  valid  claims,  and  allow  the  complainant  to  disclaim 
the  others  or  not,  as  he  deems  most  prudent  ?  Or  ought 
the  chancellor  to  refuse  both  the  injunction  and  the  account, 
till  the  complainant  shall  have  filed  a  disclaimer?  Or 
ought  the  chancellor  to  grant  an  injunction  whether  the 
complainant  disclaims  or  not,  while  refusing  an  account  till 
after  he  shall  have  done  so?  Or  ought  the  chancellor,  in 
case  the  complainant  declines  to  disclaim,  to  refuse  an  in- 
junction, and  grant  a  decree  for  an  account  ?  The  second 
of  these  courses  has  been  the  practice  followed  by  Justice 
BLATCHFORD  ; 6  and  by  Judge  WALLACE  ; 6  Judge  SHIPMAN, 

1  Filley  v.  Stove  Co.  30  Fed.  Rep.  5  Myers  «.  Frame,  8  Blatch.  446, 
434,  1887.  1871;  Burdett  «.  Estey,  15  Blatch. 

2  Smith  «.  Nichols,   21  Wallace,  349,1878;  Chrislman  v.  Rumsey,  17 
117,  1874.  Blatch.  148,  1879. 

z  Revised  Statutes,  Section  4917;  6  Brainard  «.  Gramme,  12  Fed. 

Tuck*.  Bramhill,  6  Blatch.  95,  1868.  Rep.  621,  1882. 

4  Reed  v.  Cutter,  1  Story,  590,  7  Tyler  v.  Galloway,  12  Fed.  Rep. 

1841.  567,  1882. 


CHAP.  VIII.]  DISCLAIMERS.  159 

and  Judge  WHEELER,'  and  also  by  Justice  MATTHEWS  and 
Judge  SAGE."  The  third  was  that  adopted  by  Judge  CAD- 
WALLADER.3  The  point  has  never  been  decided  by  the 
Supreme  Court,  though  the  action  of  that  tribunal,  in 
O'Reilly  v.  Morse  ;*  appears  to  favor  the  first  of  the  four 
suggested  views.  The  subject  is  a  complex  one,  and  when 
the  law  relevant  thereto  is  finally  settled,  a  number  of  con- 
siderations will  require  to  be  weighed  which  appear  not  to 
have  been  heretofore  considered. 

The  second  view  of  the  law  operates  to  deny  an  appeal 
from  the  Circuit  Court  upon  the  question  of  the  necessity 
for  a  disclaimer.  If  the  patentee  submits  to  the  condition 
imposed  by  the  chancellor,  and  if,  in  order  to  secure  an  in- 
junction and  an  account  on  his  confessedly  valid  claims,  he 
disclaims  the  others,  and  if  the  Supreme  Court,  on  an  appeal 
by  the  defendant,  holds  that  no  disclaimer  was  necessary  in 
the  case,  it  will  be  impossible  to  rectify  the  error,  for  there 
is  no  way  to  recall  a  disclaimer. 

The  third  view  is  open  to  the  same  objections  as  the 
second,  but  in  a  diminished  degree  ;  a  degree  diminished, 
in  any  particular  case,  in  the  same  proportion  that  the 
value  of  an  injunction,  bears  to  the  value  of  an  injunction 
and  an  account.  It  is  also  open  to  the  objection  of  incon- 
sistency, for  there  is  probably  no  reason  for  refusing  an 
account,  which  does  not  apply  with  equal  force  to  an  in- 
junction. 

The  fourth  view  seems  still  less  reasonable  than  the  third, 
because  an  account  is  incidental  to  an  injunction,  and  if  no 
injunction  is  granted,  the  power  to  enter  a  decree  for  an 
account  is  sometimes  wanting. 

The  first  view  would  probably  be  found  to  be  more  con- 
sistent with  convenience  and  with  justice  than  either  of  the 
others.  Whenever  a  Circuit  Court  decides,  that  while  some 
of  the  claims  of  a  patent  are  valid  and  have  been  infringed, 

1  Matthews  «.  Spangenberg,  14  3  Aiken  v.  Dolan,  3  Fisher,  207, 

Fed.  Rep.  350,  1882.  1867. 

8  Odell  v.  Stout,  22  Fed.  Rep.  4  O'Reilly  v.  Morse,  15  Howard, 

169,  1884.  121,  1853. 


160  DISCLAIMERS.  [CHAP.   VIII. 

others  are  void  and  should  be  disclaimed ;  that  decision  is 
right  or  it  is  wrong.  If  it  is  wrong,  the  patentee  ought  to 
have  an  opportunity  to  get  it  corrected  by  the  Supreme 
Court.  On  the  other  hand,  if  that  decision  is  right,  it  will 
be  either  obviously  right  or  questionably  right.  If  it  is 
obviously  right,  and  if  the  patentee  insists  on  taking  a 
decree  without  filing  a  disclaimer,  he  will  do  so  at  his 
peril ;  for  the  Supreme  Court  will  probably  hold,  on  the 
defendant's  appeal,  that  the  omission  to  disclaim  was  un- 
reasonable, and  the  whole  patent  therefore  void.  If  the 
decision  is  questionably  right;  that  is  to  say,  if  there  is 
room  for  difference  of  intelligent  opinion  upon  the  point, 
then  the  patentee  ought  not  to  be  forced  to  disclaim  till  the 
Supreme  Court  shall  have  decided  that  question  against 
him.  No  ultimate  injustice  would  result  to  either  litigant, 
were  the  first  of  the  four  courses,  adopted  by  the  Circuit 
Courts ;  whereas  the  adoption  of  either  of  the  others,  in- 
volves a  denial  of  the  right  of  appeal ;  a  right  provided  by 
the  statute  in  all  cases  touching  patents.1 

1  Revised  Statutes,  Section  699. 


CHAPTEE  IX. 


REISSUES. 


210.  Beginning  of  the  history  of  re-      226. 
issues. 

211.  First  statute  providing  for  re-      227, 
issues,  1832. 

212.  Reissues  under  the  Patent  Act 

of  1836.  228. 

213.  Amendments  made  in  the  re- 
issue law,  by  the  Patent  Act  of      229. 
1837. 

214.  Reissues  under  the  Patent  Act 

of  1870.  230. 

215.  Reissues   under    the    Revised      231. 
Statutes. 

216.  Subjects  of  reissues.  232. 

217.  The     words     "specification," 
"  defective, "and  " insufficient" 
defined.  233. 

218.  Faults  which  justify  reissues.         239. 

219.  Faults  in  claims  which  justify 
reissues.  j  240, 

220.  Inadvertence,     accident,     and      242. 
mistake. 

221.  Question  of  the  conclusiveness 
of  the  Commissioner's  decision 
relevant  to  existence  of  reissua-      243. 
ble  faults,  and  relevant  to  the    I 
existence  of  inadvertence,  acci-    |  244. 
dent,  or  mistake. 

222.  The  question  of  the  last  sec-      245. 
tion  discussed  and   supported    i  246. 
in  the  affirmative.  247. 

223.  The  same  question  discussed 

and  supported  in  the  negative.       248. 

224.  Great  importance  of  the  ques- 
tion. 249. 

225.  The  text  writer's  opinion   of 
the  true  answer. 


The  doctrine   of  the  case  of 
Miller  v.  Brass  Co. 
The  length  of  the  delay  con- 
templated by  the  doctrine  of 
Miller  v.  Brass  Co. 
Effect  of  delay  in  other  cases 
than  those  of  broadened  claims. 
The    statute   relevant   to   two 
years'  prior  use  or  sale,  has  no 
application  to  reissues  as  such. 
Surrender  of  patent. 
Effect  of  surrender  with,  and 
also  without,  reissue. 
Reissues  of  reissued  patents  and 
of  extended  patents,  but  not 
of  expired  patents,  are  proper. 
Same  invention. 
"  Where  there  is  neither  model 
nor  drawing." 
New  matter. 

Reissues  must  be  for  same  in- 
vention as  prior  reissues,  and 
also  for  same  invention  as  orig- 
inals. 

Legal    presumption    of   same- 
ness of  invention. 
Omission,   as  it  affects  same- 
ness of  invention. 
Reissues  for  sub-combinations. 
Reissues  for  single  devices. 
Reissues  as  affected  by  substi- 
tution of  equivalents. 
Reissues  entitled  to  a  liberal 
construction. 

Reissued  patents  may  be  valid 
as  to  some  claims  while  void 
as  to  others. 

161 


162 


REISSUES. 


[CHAP.  ix. 


250.  Executors,  administrators,  and 
assigns  may  procure  reissues. 

251.  One  of  several  executors  may 
procure  a  reissue. 

252.  Rights  of  assignees  in  reissues. 


253.  The  rights  of  grantees  in  re- 
issues. 

254.  The   legal    effect   of    reissued 
patents. 


§  210.  IN  1821  James  Grant,  of  Providence,  Rhode 
Island,  received  letters  patent  of  the  United  States  for  an 
improved  mode  of  manufacturing  hat  bodies.  In  1825  he 
presented  a  petition  to  Henry  Clay,  Secretary  of  State, 
stating  that  the  specification  of  his  patent  was  defective, 
and  praying  that  his  patent  might  be  cancelled,  and  a  new 
and  correct  one  granted,  embracing  the  same  improvements, 
so  far  as  they  were  set  forth  in  certain  new  specifications 
drawings  and  explanations  which  accompanied  the  petition. 
Though  there  was,  at  that  time,  no  statute  which  authorized 
any  such  proceeding ;  yet,  on  the  advice  of  William  Wirt, 
the  Attorney-General,  and  in  the  name  of  John  Quincy 
Adams,  the  President  of  the  United  States,  Mr.  Clay  can- 
celled the  letters  patent  of  Mr.  Grant,  and  thereupon  issued 
to  him  new  letters  patent,  for  the  same  invention,  and  for 
the  residue  of  the  term  covered  by  the  original  document. 
Annexed  to  the  new  letters,  and  forming  part  thereof,  were 
the  new  specifications,  drawings  and  explanations,  which 
had  accompanied  Mr.  Grant's  petition. 

In  the  case  of  Grant  v.  Raymond1  the  validity  of  this 
proceeding  was  called  in  question  in  the  Supreme  Court ; 
and  was  argued  in  the  negative  by  Daniel  Webster.  The 
Supreme  Court  sustained  the  validity  of  the  reissued 
patent,  on  the  general  spirit  and  object  of  the  patent  law ; 
not  on  its  letter.  In  delivering  the  opinion  Chief  Justice 
MARSHALL  said :  "  If  the  mistake  should  be  committed  in 
the  Department  of  State,  no  one  would  say  that  it  ought 
not  to  be  corrected.  All  would  admit  that  a  new  patent, 
correcting  the  error,  and  which  would  secure  to  the  patentee 
the  benefits  which  the  law  intended  to  secure,  ought  to  be 
issued.  And  vet  the  act  does  not  in  terms  authorize  a  new 


Grant  v.  Raymond,  6  Peters,  243,  1832. 


CHAP.  IX.]  REISSUES.  163 

patent,  even  in  that  case.  Its  emanation  is  not  founded  on 
the  words  of  the  law,  but  it  is  indispensably  necessary  to 
the  faithful  execution  of  the  solemn  promise  made  by  the 
United  States.  Why  should  not  the  same  step  be  taken 
for  the  same  purpose,  if  the  mistake  has  innocently  been 
committed  by  the  inventor  himself?"  And  his  Honor 
further  said  :  "  If,  by  an  innocent  mistake,  the  instrument 
introduced  to  secure  his  privilege  fails  in  its  object,  the 
public  ought  not  to  avail  itself  of  this  mistake,  and  to  appro- 
priate the  discovery  without  paying  the  stipulated  considera- 
tion. The  attempt  would  be  disreputable  in  an  individual, 
and  a  Court  of  Equity  might  interpose  to  restrain  him." 

In  pursuance  of  the  doctrines  of  the  first  four  sentences 
quoted  above  from  Chief  Justice  MARSHALL,  the  Commis- 
sioner may  cancel  a  patent  and  issue  a  corrected  one  in  its 
stead,  where  the  first  one  was  caused,  by  an  inadvertent 
error  in  the  Patent  Office,  to  grant  less  to  the  inventor  than 
he  had  applied  for  and  was  entitled  to  receive,  and  where 
the  inventor  refuses  to  accept  the  patent  thus  limited.1 

§  211.  In  accordance  with  the  spirit  of  the  decision  in 
Grant  v.  Raymond,  and  within  a  few  months  after  that  de- 
cision was  made,  Congress  enacted  a  statute  to  regulate  the 
granting  of  reissued  letters  patent."  That  statute  provided, 
in  effect,  that  whenever  any  patent  should  be  invalid  or  in- 
operative, because  the  inventor,  by  inadvertence,  accident 
or  mistake,  and  without  any  fraudulent  or  deceptive  inten- 
tion, failed  to  conform  his  specification  to  the  then  ex- 
isting statutory  requirements  ;  it  should  be  lawful  for  the 
Secretary  of  State,  upon  the  surrender  to  him  of  such 
patent,  and  the  delivery  to  him  of  a  sufficient  statutory 
specification,  to  cause  a  new  patent  to  be  granted  to  the 
same  inventor,  for  the  same  invention,  and  for  the  residue  of 
the  term  of  the  original  patent.  That  statute  also  provided 
that  the  right  to  receive  a  reissue,  should  extend  to  execu- 
tors, administrators  or  assigns  ;  and  that  the  reissue  patent 


1  Railway  Register  Mfg.   Co.   v.          2  4  Statutes   at   Large,    Ch.   162, 
Railroad  Co.  23  Fed.  Rep.  593, 1885.      Section  3,  p.  559. 


164  REISSUES.  [CHAP.  ix. 

should  be  liable  to  the  same  defences  as  the  original ;  and 
that  no  public  use  of  the  invention,  after  the  grant  of  the 
original  patent,  should  prejudice  the  right  of  the  patentee 
to  recover  for  infringement  of  the  reissue  patent,  committed 
after  the  grant  thereof. 

§  212.  The  Patent  Act  of  1836 '  repealed  all  prior  statutes 
relevant  to  patents,  and  provided  a  more  elaborate  system 
in  place  of  the  repealed  laws.  Section  13  of  that  Act  re- 
ferred to  reissues,  and  provided,  in  effect,  that  whenever 
any  patent  should  be  inoperative  or  invalid  because  the  in- 
ventor had,  by  inadvertence,  accident,  or  mistake,  and  with- 
out any  fraudulent  or  deceptive  intention,  made  his  descrip- 
tion or  specification  defective  or  insufficient,  or  had  claimed 
in  his  specification  more  than  he  had  a  right  to  claim  as 
new  ;  it  should  be  lawful  for  the  Commissioner  of  Patents, 
upon  the  surrender  to  him  of  such  patent,  to  cause  a  new 
patent  to  be  issued  to  the  same  inventor,  for  the  same  in- 
vention, in  accordance  with  the  inventor's  corrected  descrip- 
tion and  specification,  and  for  the  residue  of  the  term  of 
the  original  patent.  This  statute  also  provided  that  the 
right  to  receive  a  reissue  should  extend  to  executors,  ad- 
ministrators and  assigns,  and  that  the  reissued  patent, 
together  with  the  corrected  description  and  specification, 
should  have  the  same  effect  in  law,  on  the  trial  of  all  ac- 
tions thereafter  commenced  for  causes  subsequently  accru- 
ing, as  though  the  same  had  been  originally  filed  in  such 
corrected  form  before  the  issuing  of  the  original  patent. 

§  213.  The  Patent  Act  of  1837 a  made  some  additions  to 
the  statute  of  1836,  relevant  to  reissues.  Section  5  recog- 
nized a  right  in  a  patentee  to  demand  and  receive  several 
reissued  patents  for  distinct  parts  of  the  subject-matter  of 
his  surrendered  patent.  And  Section  8  provided,  that  when- 
ever a  patent  should  be  returned  for  reissue,  the  claims 
thereof  should  be  subject  to  revision  and  restriction,  in 
the  same  manner  as  were  original  applications  for  pat- 


1  5  Statutes  at  Large,  Ch.  357,  p.         2  5  Statutes  at  Large,  Ch.  45,  p. 
117.  191. 


CHAP.  IX.]  REISSUES.  165 

ents ;  and  that  the  Commissioner  should  not  grant  any  re- 
issue, until  the  applicant  should  have  entered  a  disclaimer, 
or  altered  his  claim,  in  accordance  with  the  decision  of  the 
Commissioner ;  and  that  the  applicant,  if  dissatisfied  with 
such  decision,  should  have  the  same  remedy  by  way  of  ap- 
peal, that  the  law  provided  in  cases  of  original  applications. 
§  214.  The  Patent  'Act  of  1870 '  substantially  re-enacted 
the  law  of  reissues  as  it  had  been  embodied,  for  more  than 
thirty  years,  in  the  statutes  of  1836,  and  1837;  but  re-enacted 
that  law  with  a  few  modifications  and  additions.  Where 
the  old  law  used  the  phrase  "  defective  or  insufficient  de- 
scription or  specification,"  the  new  law  used  the  words  "  de- 
fective or  insufficient  specification."  Where  the  old  statute 
made  it  lawful  for  the  Commissioner  to  reissue  a  patent,  the 
new  statute  made  it  obligatory  upon  him  to  do  so.  Where  the 
old  law  recognized  a  right  in  a  patentee  to  demand  and  re- 
ceive several  reissue  patents  in  the  place  of  one  surrendered 
patent,  the  new  law  provided  that  the  Commissioner  might, 
in  his  discretion,  cause  several  such  patents  to  be  issued 
upon  the  demand  of  the  applicant.  The  provision  of  the 
old  statute,  that  the  applicant,  if  dissatisfied  with  the  deci- 
sion of  the  Commissioner,  should  have  the  same  remedy 
and  be  entitled  to  the  same  privileges  and  proceedings,  as 
were  provided  by  law  in  the  case  of  original  applications 
for  patents,  was  omitted  in  the  new  statute ;  but  its  effect 
was  retained,  by  expressly  mentioning  reissues  in  those 
sections  of  the  new  statute,  which  provided  for  that  remedy, 
and  for  those  privileges  and  proceedings.2  Section  33  of 
the  new  statute  provided  further,  that  where  a  patent  was 
to  be  reissued  to  an  assignee  of  the  inventor,  the  applica- 
tion should  be  made,  and  the  specification  be  sworn  to,  by 
the  inventor,  if  he  be  living.  The  Patent  Act  of  March  3, 
1871,3  prescribed,  that  the  provision  of  Section  33,  just  men- 
tioned, should  not  be  construed  to  apply  to  any  patent,  is- 


1  16  Statutes  at  Large,  Ch.  230,  p.       Sections  46  to  52,  p.  204. 
198.  3 16  Statutes  at  Large,  Ch.  132,  p. 

2 16  Statutes  at  Large,  Ch.  230,      583. 


166  EEISSUES.  [CHAP.  ix. 

sued  and  assigned  before  July  8,  1870  :  the  date  of  the  ap- 
proval of  the  Act  of  which  that  section  formed  a  part.  An- 
other new  provision  of  the  Statute  of  1870,  was  as  follows  : 
"  No  new  matter  shall  be  introduced  into  the  specification, 
nor  in  case  of  a  machine  patent  shall  the  model  or  drawings 
be  amended,  except  by  each  other ;  but  where  there  is 
neither  model  nor  drawing,  amendments  may  be  made  upon 
proof  satisfactory  to  the  Commissioner  that  such  new  mat- 
ter or  amendment  was  a  part  of  the  original  invention,  and 
was  omitted  from  the  specification  by  inadvertence,  accident, 
or  mistake,  as  aforesaid." 

§  215.  Section  4916  of  the  Revised  Statutes  is  substan- 
tially a  copy  of  Section  53  of  the  Statute  of  1870.  Section 
4895  of  the  Revised  Statutes,  re-enacted  the  provision  above 
cited  from  Section  33  of  the  Act  of  1870,  coupled  with  the 
statutory  construction  of  that  provision,  which  was  contained 
in  the  Patent  Act  of  1871,  and  which  was  above  explained. 
Sections  46  to  52  of  the  Act  of  1870,  were  re-enacted  as  Sec- 
tions 4909  to  4915  of  the  Revised  Statutes.  Thus  the  lawr 
of  reissues  underwent  no  change  when  the  Revised  Statutes 
were  approved.  The  reissue  provisions  which  were  em- 
bodied in  the  Act  of  1870,  are  still  the  statutes  which  govern 
the  subject. 

The  meritorious  ground  for  reissues,  as  stated  by  the 
Supreme  Court  in  Grant  v.  Raymond,  has  now  been  set 
forth ;  and  the  subsequently  enacted  and  gradually  devel- 
oped statutory  law  on  the  subject  has  been  explained.  To 
explore  the  great  mass  of  relevant  adjudicated  cases,  and 
to  extract  from  those  cases  the  detailed  doctrines  of  the  law 
of  reissues,  is  the  engaging  work  upon  which  it  is  now  in 
order  to  enter. 

§  216.  To  be  the  lawful  subject  of  a  reissue,  a  patent  must 
be  invalid,  or  it  must  be  at  least  inoperative.2  All  patents 
that  are  invalid,  are  also  inoperative.  If  the  two  words  had, 


1  16  Statutes  at  Large,  Ch.  132,      1836,  Section  13;  Act  of  1870,  Sec- 
Section  53,  p.  206.  tion   53;  Revised  Statutes,  Section 
-  Act  of  1832,  Section  3;  Act  of      4916. 


CHAP.  IX.]  BEISSUES.  1C? 

in  the  statutes,  been  always  connected  with  the  word  "  and ;" 
there  would  be  ground  for  an  argument  that  they  were  used 
synonymously.  In  fact,  however,  they  have  always  been 
connected  with  the  word  "  or ;"  thus  indicating  that  they 
were  not  intended  to  signify  the  same  thing.  What  they  do 
respectively  mean,  is  to  be  ascertained  by  considering  other 
provisions  of  the  statute ;  namely  those  .provisions  which 
indicate  the  causes  from  which  either  invalidity  or  inopera- 
tiveness  must  have  sprung,  in  order  to  make  patents  re- 
issuable.  To  have  that  effect,  either  of  those  faults  must 
have  resulted  from  a  defective  or  insufficient  specification, 
or  from  the  patentee  claiming  more  than  he  had  a  right  to 
claim  as  new.  This  last  cause  of  fault,  was  first  mentioned 
in  the  statute  of  1836.  In  the  following  year,  Congress  pro- 
vided that  patents  should  no  longer  be  held  to  be  invalid, 
on  that  ground,  provided  proper  disclaimers  were  reason- 
ably entered.1  Ever  since  1837,  therefore,  faults  in  patents, 
arising  from  patentees  claiming  more  than  they  had  a  right 
to  claim,  have  been  as  curable  by  disclaimers  as  by  reissues  ; 
and,  as  the  remedy  by  disclaimer  is  both  cheaper  and  bet- 
ter than  the  other,  the  remedy  by  reissue  has  seldom  or 
never  been  sought  as  a  cure  for  a  fault  of  that  class.  The 
case  law  on  the  subject  of  reissues,  is  therefore  substantially 
confined  to  reissues  which  were  granted  because  the  sur- 
rendered patents  were  alleged  to  be  invalid  or  inoperative, 
by  reason  of  defective  or  insufficient  specifications. 

§  217.  The  meaning  of  the  word  "  specification  "  is  that 
of  the  words  "  description  and  claim  "  when  it  is  used,  in 
the  statutes,  separately  from  both  those  words.2  In  the 
reissue  section  of  the  statute  of  1836,  the  word  "  descrip- 
tion "  was  used  in  connection  with  the  word  "  specification  " 
and  thus  limited  the  meaning  of  the  latter  to  the  significa- 
tion of  the  word  "  claim."  3  On  the  other  hand,  in  the  fourth 
sentence  of  Section  4916  of  the  Eevised  Statutes,  the  word 


1  5  Statutes  at  Large,  Ch.  45,  Sec-      1880. 

tions  7  and  9,  p.  193.  3  Wilson  v.  Coon,  18  Blatch.  536, 

s  Wilson  v.  Coon,  18  Blatch.  535,      1880. 


108  KEISSUES.  [CHAP.  ix. 

"  specification  "  is  used  in  immediate  connection  with  the 
word  "  claim,"  and  is  therefore  limited,  in  that  place,  to  the 
meaning  of  the  word  "  description." 

The  word  "  defective  "  and  the  word  "  insufficient "  are 
not  synonymous  in  this  statute,  as  at  first  thought  they  may 
appear  to  be.  The  former  word  means  "bad,"  and  the 
latter  means  "  lacking."  A  description  may  be  complete, 
while  it  is  obscure  in  some  of  its  parts.  In  such  a  case,  it 
is  defective.  On  the  other  hand,  it  may  be  perfectly  clear, 
as  far  as  it  goes,  while  omitting  all  reference  to  some  parts 
of  the  thing  described.  In  such  a  case,  it  is  insufficient. 
So  also,  a  claim  may  mistily  cover  the  whole  invention  de- 
scribed, but  being  liable  to  be  misunderstood,  it  is  defective. 
On  the  other  hand  it  may  be  entirely  clear,  while  it  is  nar- 
rower than  the  invention,  and  therefore  insufficient  to  cover 
and  secure  the  latter. 

§  218.  From  the  foregoing  it  follows,  that  ever  since  1836, 
those  patents  have  been  reissuable  which  were  invalid  or 
inoperative,  by  reason  of  defective  or  insufficient  descrip- 
tions or  claims ;  provided  their  faults  arose  from  inadvert- 
ence, accident  or  mistake,  and  without  any  fraudulent  or 
deceptive  intention.  This  proviso  is  equally  imperative  in 
all  cases.1  Assuming  it  to  be  satisfied  in  all,  and  disregard- 
ing the  nugatory  provisions  relevant  to  reissues  when  the 
patentee  has  claimed  too  much,  it  appears  that  the  faults 
which  make  patents  reissuable  are  four  in  number.  1.  In- 
validity arising  from  defective  description'.  2.  Invalidity 
arising  from  insufficient  description.  3.  Invalidity  arising 
from  defective  claims.  4.  Inoperativeness  arising  from  in- 
sufficient claims. 

The  nature  of  the  first  three  of  these  faults,  is  explained 
in  the  chapter  on  letters  patent.  Whether  or  not  a  par- 
ticular patent  was  or  is  invalid  for  either  of  those  reasons, 
may  be  determined,  by  the  application  thereto  of  the  rele- 
vant rules  and  doctrines  set  forth  in  that  chapter.  Specifi- 


1  Coon  v.  Wilson,  113  U.  S.  277,      Clock  Co.  123  U.  S.  103,  1887. 
1884;  Parker  &  Whipple  Co.  v.  Yale 


CHAP.  IX.]  KEISSUES.  169 

cations  have,  for  many  years,  been  generally  written  with 
such  a  degree  of  skill  and  care,  that  comparatively  few 
letters  patent  have,  in  recent  times,  been  characterized  by 
either  of  the  first  two  faults.  Those  which  have  possessed 
the  third  fault,  have,  in  many  cases,  been  made  to  possess 
it,  in  order  to  deceive  or  defraud  the  public,  and  not  from 
inadvertence,  accident  or  mistake.  Defective  claims  are 
frequently  nebulous  claims,  intended  to  mean  much  or  to 
mean  little,  according  to  the  exigencies  of  future  events. 
To  the  public,  they  are  intended  to  convey  a  signification 
so  wide  as  to  deter  others  than  the  patentee,  from  accom- 
plishing the  same  result  by  other  means  than  those  which 
the  patentee  is  entitled  to  claim.  To  the  courts,  they  are 
intended  to  convey  a  meaning  so  narrow  as  to  enable  them 
to  successfully  run  the  gauntlet  of  litigation.  For  such 
purposes  of  duplicity,  nebulously  defective  claims  are  more 
effective  than  clear  and  perfect  ones  would  be.  Those  who 
secure  such  patents,  therefore  seldom  surrender  them  for 
reissue,  except  in  cases  where  the  defect  arose  from  the 
absence  of  verbal  skill,  in  the  writers  of  the  claims,  rather 
than  from  the  presence  of  intent  to  deceive,  in  the  owners 
of  the  patents.  The  considerations  stated  in  this  paragraph, 
account  for  the  well-known  fact,  that  most  of  our  reissued 
patents  wrere  reissued  because  of  alleged  inoperativeness 
arising  from  alleged  insufficiency  of  claims. 

§  219.  Claims  are  the  only  operative  parts  of  specifica- 
tions. If  an  inventor  has  produced  two  or  more  inventions, 
so  allied  that  they  may  properly  be  secured  to  him  in  one 
letters  patent ;  and  if  he  fully  describes  all  of  those  inven- 
tions in  the  descriptive  part  of  his  specification,  but  covers 
only  one  of  them  by  his  claims ;  then  his  patent  is  operative 
as  to  one  of  those  inventions,  and  inoperative,  as  to  the 
others.  Inoperativeness  of  that  kind,  is  sufficient  to  lay  the 
foundation  of  a  right  to  a  reissue.1  And  where  an  inventor 


1  Thompson  t.  Wooster,  114U.  S.  18  Blatch.  535,  1880;  Giant  Powder 
115,  1884;  Anilin  v.  Higgin,  15  Co.  v.  Nitro  Powder  Co.  19  Fed. 
Blatch.  291,  1878 ;  Wilson  v.  Coon,  Rep.  510,  1884. 


170  REISSUES.  [CHAP.  ix. 

claims  his  invention  only  in  combination  with  something 
else,  his  patent  is  inoperative  as  to  that  invention  alone.1 
Keissues  granted  in  these  classes  of  cases  are  called  broad- 
ened reissues.  Though  the  statute  does  not,  under  that 
name,  authorize  reissues  of  that  kind,  they  are  authorized 
by  the  general  terms  of  the  law  ; "  and  have  been  upheld  by 
the  Supreme  Court  in  many  cases.8 

§  220.  Inadvertence,  accident  or  mistake  must  have  been 
the  source  of  the  fault  in  letters  patent,  in  order  to  make 
them  reissuable.4  Such  inadvertence  or  accident  may  have 
been  suffered,  or  such  mistake  may  have  been  committed, 
by  the  patentee,  or  by  the  Commissioner  of  Patents.'  The 
statute  is  satisfied  on  this  point,  where  the  patent  was  in- 
operative by  reason  of  insufficient  claims,  if  those  claims 
were  made  too  few  or  too  narrow  because  the  patentee  was 
mistaken  about  the  state  of  the  art,8  or  because  the  patentee 
or  his  solicitor,  when  concerting  the  claims,  inadvertently 
failed  to  make  them  as  extensive  as  the  invention.7  So 
also,  the  statute  is  satisfied,  where  the  patent  was  inoper- 
ative by  reason  of  insufficient  claims,  if  those  claims  were 
made  too  narrow  because  the  Commissioner,  on  account  of 
an  erroneous  opinion  entertained  by  him,  refused  to  allow 
them  to  be  made  as  broad  as  they  ought  to  have  been,8  or 
because  of  an  erroneous  decision  made  by  him  in  an  inter- 
ference proceeding.9  But  the  statute  is  not  satisfied  where 
the  applicant  or  his  attorney  cancels  a  rejected  claim  and 
afterward  seeks  to  reclaim  it  by  a  reissue.10 

1  Jenkins  v.  Stetson,  32  Fed.  Rep.  5  Grant  v. Raymond,  6  Peters,  218, 

400,  1887.  1832. 

*  Miller  «.  Brass  Co.  104  U.  S.  8  National  Spring  Co.  v.  Mfg.  Co. 

354,  1881.  12  Blatch.  89,  1874. 

3  Battin  *.  Taggert,  17  Howard,  74,  '  Miller  «.  Brass  Co.  104  U.  S.  352, 
1854;  Morey  v.  Lockwood,  8  Wai-  1881. 

lace,  230,  1868;  Rubber  Co.  v.  Good-  8  Morey  v.  Lockwood,  8  Wallace, 

year,  9  Wallace,  788,  1869 ;  Corn-  ^30, 1868. 

planter   Patent,    23    Wallace,    217,  9  American  Shoe-tip  Co.  v.  Pro- 

1874;  Marsh  v.  Seymour,  97  U.  S.  tector  Co.  2  Bann.  &  Ard.  551. 1877. 

356,  1877.  '»  In  re  Hatchman,  3  Mackey,  288, 

4  Revised  Statutes,  Sections  4916.  1884. 


CHAP.  IX.]  BEISSUES.  171 

§  221.  The  Supreme  Court  has  recognized  the  fact,  that 
patents  have  been  reissued  by  the  Commissioner,  in  some 
cases  where  there  was  no  statutory  ground  therefor ; l  that 
is  to  say,  in  some  cases  where  the  patents  surrendered  were 
neither  invalid  nor  inoperative  ;  or  if  invalid  or  inoperative, 
were  not  so  by  reason  of  a  defective  or  insufficient  specifica- 
tion ;  or  if  invalid  or  inoperative  by  reason  of  a  defective  or 
insufficient  specification,  were  not  so  because  of  inadvert- 
ence, accident,  or  mistake.  It  is,  however,  still  an  unsettled 
question  whether  any  of  these  matters  can  be  investigated 
in  courts.  The  point  is  so  important,  and  involves  so  many 
cases  and  considerations,  that  it  deserves  and  must  receive 
an  extensive  explanation  in  this  book.  To  that  explanation 
it  is  now  convenient  to  proceed. 

§  222.  It  has  several  times  been  said  by  divers  justices  of 
the  Supreme  Court,  that  the  Commissioner,  when  granting 
a  reissue,  is  presumed  to  have  decided  that  some  statutory 
ground  for  a  reissue  existed ;  and  that  his  decision,  on  that 
point,  is  not  subject  to  review,  in  any  suit  for  infringement.* 

In  the  first  of  these  cases,  the  point  was  not  before  the 
court  for  decision.  The  question  at  bar  was  whether  the  re- 
issued patent  needed  to  contain  any  recital  of  the  particular 
statutory  faults  on  account  of  which  it  was  granted.  The 
decision  on  that  point  was  in  the  negative.  In  stating  the 
grounds  upon  which  that  decision  was  based,  Justice  STORY 
overstepped  the  issue,  and,  when  speaking  of  the  evidence 
of  reissuability  laid  before  the  Commissioner,  remarked : 
"  No  other  tribunal  is  at  liberty  to  examine  or  controvert 
the  sufficiency  of  such  proof,  if  laid  before  him,  when  the 
law  has  made  such  officer  the  proper  judge  of  their  suf- 
ficiency and  competency." 


1  Burr  v.  Duryee,  1  Wallace,  531,  404,  1846;  Clifford,  J.,  in  Seymour 
1863;  Leggett  v.  Avery,  101  U.  S.  D.  Osborne,  11  Wallace,  516,  1870; 
259,  1879.  and  in  Collar  Co.  «.  Van  Dusen,  23 

2  Story,  J.,  in  Philadelphia  and  Wallace,  558,  1874;  and  Strong,  J., 
Trenton  Railroad  Co.  n.  Stimpson,  in  Ball  «.  Langles,  102  U.  S.  129, 
14  Peters,  448, 1840 ;  McLean,  J.,  in  1880. 

Stimpson  v.  Railroad  Co.  4  Howard, 


172  REISSUES.  [CHAP.  ix. 

In  the  second  case  the  Supreme  Court  found  a  number  of 
errors  in  the  charge  to  the  jury  which  had  been  given  by 
the  judge  in  the  court  below.  The  first  two  of  those  errors, 
had  no  relevancy  to  the  point  now  under  inspection.  On 
that  point  the  judge  had  told  the  jury  that  the  original 
patent  was  inoperative  and  invalid  by  reason  of  non-com- 
pliance with  the  requisites  of  the  statute;  but  that  the 
plaintiff  had  not  made  out  such  a  case  of  inadvertence, 
accident,  or  mistake  as  justified  a  reissue.  In  delivering 
the  opinion  of  the  Supreme  Court,  Justice  McLEAN  did  not 
expressly  characterize  this  part  of  the  charge  as  erroneous, 
as  he  had  expressly  done  relevant  to  the  first  two  points. 
The  following  paragraph  contains  what  he  said  on  the  sub- 
ject: 

"By  the  thirteenth  section  of  the  Act  of  1836,  'if  the 
patent  shall  be  inoperative  or  invalid,  by  reason  of  a  de- 
fective or  insufficient  description  or  specification,'  etc.,  'if 
the  error  has  or  shall  have  arisen  by  inadvertency,  acci- 
dent, or  mistake,  and  without  any  fraudulent  or  deceptive 
intention,  it  shall  be  lawful '  to  surrender  it,  etc.  Now,  as 
in  granting  the  renewed  patent,  the  officers  of  the  govern- 
ment act  under  the  above  provisions,  their  decision  must  at 
least  be  considered  prima  facie  evidence  that  the  claim  for 
a  renewal  was  within  the  statute.  But  this  would  not  be 
conclusive  against  fraud  in  the  surrender  and  renewal, 
which,  on  the  evidence,  would  be  a  matter  for  the  jury. 
And  we  suppose  that  the  inquiry  in  regard  to  the  surrender 
is  limited  to  the  fairness  of  the  transaction.  In  whatever 
manner  the  mistake  or  inadvertence  may  have  occurred  is 
immaterial.  The  action  of  the  government  in  renewing  the 
patent  must  be  considered  as  closing  this  point,  and  as 
leaving  open  for  inquiry,  before  the  court  and  jury,  the 
question  of  fraud  only." 

What  his  Honor  said  about  primd  facie  evidence,  is  un- 
doubtedly the  law  ; '  but  what  he  said  about  fraud,  has 
since  been  decided  to  be  incorrect.  It  is  now  settled  that 

1  Clark  v.  Wooster,  119  U.  S.  326,  1886. 


CHAP.  IX.]  REISSUES.  173 

questions  of  fraud,  in  obtaining  reissues,  cannot  be  raised 
in  any  infringement  suit.1 

In  the  third  case  cited,  the  defendant  did  claim,  in  his 
answer,  that  the  reissued  letters  patent  were  void,  because 
no  evidence  was  produced  before  the  Commissioner,  to 
show  that  the  originals  were  inoperative  or  invalid.  The 
defendant,  however,  introduced  no  proof  to  support  that 
statement  of  his  pleading,  and  the  point  was,  for  that  rea- 
son, necessarily  overruled.  The  case  furnished  no  means 
of  reviewing  the  Commissioner's  decision,  and  therefore 
there  was  no  occasion  for  the  court  to  decide  whether  it 
was,  in  law,  reviewable.  Justice  CLIFFORD  however  pro- 
ceeded to  say,  that :  "  Where  the  Commissioner  accepts  a 
surrender  of  an  original  patent  and  grants  a  new  patent, 
his  decision  in  the  premises,  in  a  suit  for  infringement,  is 
final  and  conclusive,  and  is  not  re-examinable  in  such  a  suit 
in  the  Circuit  Court,  unless  it  is  apparent  upon  the  face  of 
the  patent  that  he  has  exceeded  his  authority,  that  there  is 
such  a  repugnancy  between  the  old  and  the  new  patent 
that  it  must  be  held,  as  matter  of  legal  construction,  that 
the  new  patent  is  not  for  the  same  invention  as  that  em- 
braced and  secured  in  the  original  patent."  Battin  v.  Tag- 
gert  and  O'Reilly  v.  Morse  were  cited  by  Justice  CIIFFORD 
to  support  the  foregoing  obiter  dictum.  There  was,  how- 
ever, no  such  question  decided  in  either  of  those  cases.  In 
Battin  v.  Taggert,  Justice  McLEAN  casually  remarked  that 
in  Stimpson  v.  Railroad  Co.  it  was  held  "  that  the  proceed- 
ing before  the  Commissioner,  in  the  surrender  and  reissue 
of  a  patent,  is  not  open  for  investigation,  except  on  ground 
of  fraud."  In  O'Reillys.  Morse,  the  question  was  raised 
by  the  defendant  whether  Morse's  reissued  patent  was  not 
void  because  his  surrendered  patent  was  neither  inopera- 
tive nor  invalid.  The  court  decided  that  the  reissued  pat- 
ent was  not  void,  but  in  so  deciding  the  court  did  not  ex- 
plain whether  it  agreed  in  opinion  with  the  Commissioner 

1  Eureka    Co.   «.   Bailey  Co.   11       Cranford,  37  Off.  Gaz.  1353,  1885. 
Wallace,   492,   1870;  Schillinger  v. 


174  REISSUES.  [CHAP.  ix. 

touching  the  invalidity  or  inoperativeness  of  the  surren- 
dered patent,  or  whether  it  found  itself  without  power  to 
review  his  decision  on  that  point. 

In  the  case  of  Collar  Co.  v.  Van  Dusen,  the  question  was, 
whether  the  reissued  patent  and  the  surrendered  patent 
were  for  the  same  invention.  That  question  was  readily 
and  rightly  decided  in  the  negative,  and  the  patent  there- 
fore held  void.  But  Justice  CLIFFORD  said  in  passing : 
"  Unless,  however,  it  is  apparent  upon  the  face  of  the  new 
patent  that  the  Commissioner  has  exceeded  his  authority, 
his  decision  is  final  and  conclusive,  as  the  jurisdiction  to 
reissue  patents  is  vested  in  him  subject  to  a  single  excep- 
tion, that  if  there  is  such  repugnancy  between  the  old  and 
new  patent  that  it  must  be  held,  as  matter  of  legal  con- 
struction, that  the  reissued  patent  is  not  for  the  same  in- 
vention as  that  embraced  and  secured  in  the  original  pat- 
ent, then  the  reissued  patent  is  invalid." 

In  the  case  of  Ball  v.  Langles  the  question  was  also 
whether  the  surrendered  patent  and  the  reissued  patent  were 
for  the  same  invention.  Here  also  that  question  was 
quickly  decided  in  the  negative  and  the  patent  held  void. 
But  Justice  STRONG  also  said  in  an  obiter  dictum  that : 
"  The  Commissioner  was  invested  with  authority  to  deter- 
mine whether  the  surrendered  patent  was  invalid  by  rea- 
son of  a  defective  or  insufficient  specification,  or  because 
the  patentee  had  claimed  more  than  he  had  a  right  to  claim 
as  new  ;  and  if  he  found  such  to  be  the  case,  and  found  also 
that  the  error  had  been  due  to  inadvertence,  accident,  or 
mistake,  without  fraud,  his  decision  was  conclusive,  and 
not  subject  to  review  by  the  courts." 

In  accordance  with  the  obiter  dicta  of  the  Supreme  Court, 
in  the  five  cases  thus  reviewed,  the  same  doctrine  has  been 
announced  in  other  obiter  dicta  by  Circuit  Courts  in  many 
cases  ;  and  in  a  few  Circuit  Court  cases  it  has  been  judi- 
cially decided  to  be  law.1 


1  Smith  0.  Merriam,  6  Fed.  Rep.       9  Fed.  Rep.  390, 1881. 
713, 1881;  Selden  v.  Gas  Burner  Co. 


CHAP.  IX.]  REISSUES.  175 

§  223.  But  the  other  side  of  the  question,  stated  in  Sec- 
tion 221  of  this  book,  is  also  supported  by  several  obiter 
dicta  of  the  Supreme  Court,  and  by  several  strong  argu- 
ments in  decisions  of  several  of  the  Circuit  Courts. 

In  Burr  v.  Duryee,1  Justice  GRIER  said,  that  the  patentee, 
in  his  original  patent,  claimed  all  he  had  a  right  to  claim, 
and  claimed  no  more ;  and  that  there  was  no  error  from 
inadvertences,  accident  or  mistake.  Now  these  statements 
of  fact,  were  contrary  to  the  decision  of  the  Commissioner, 
which  was  involved  in  his  having  reissued  that  patent.  In 
this  instance,  therefore,  the  Supreme  Court  did  in  fact  re- 
view that  decision,  and  did  in  fact  pronounce  it  wrong. 

In  Rubber  Co.  v.  Goodyear,"  Justice  SWAYNE  said  that, 
"  The  surrender  was  made  by  the  executor,  for  the  reason 
that  the  specification  was  defective  and  required  amend- 
ment. This  the  law  permitted,  if  the  facts  brought  the 
case  within  the  provisions  of  the  statute.  The  Commis- 
sioner was  charged  with  the  dutv  of  examining  the  facts 

•J 

and  deciding  upon  the  application.  His  judgment  is 
shown  in  the  result.  Upon  comparing  the  context  of  the 
specifications  of  the  surrendered  and  reissued  patent,  and 
giving  to  each  a  reasonable  interpretation,  we  are  satisfied 
that  the  decision  was  correct,  and  we  see  no  reason  to  re- 
verse it."  This  therefore  was  an  instance  in  which  the 
Supreme  Court  appears  to  have  reviewed  the  decision  of 
the  Commissioner  relevant  to  the  defective  character  of  the 
specification  of  the  original  patent,  and  to  have  pronounced 
that  decision  to  be  right.  In  saying  that  they  saw  no  rea- 
son to  reverse  it,  they  implied  that  they  had  jurisdiction  to 
reverse  it,  had  any  such  reason  been  seen. 

In  James  v.  Campbell,1  Justice  BRADLEY  said  that, 
"  Where  it  is  apparent  on  the  face  of  the  patent,  or  by  con- 
temporary records,  that  no  such  inadvertence,  accident,  or 
mistake,  as  claimed  in  a  reissue  of  it,  could  have  occurred, 


1  Burr  v.  Duryee,  1  Wallace,  571,      lace,  795,  1869. 

1863.  3  James  t>.   Campbell,  104  U.    S. 

8  Rubber  Co.  v.  Goodyear,  9  Wai-      871,  1881. 


176  REISSUES.  [CHAP.  ix. 

an  expansion  of  the  claim  cannot  be  allowed  or  sustained." 
This  is  a  declaration  that  courts  will  review  and  reverse  the 
decision  of  the  Commissioner,  on  the  question  of  the  exist- 
ence of  inadvertence,  accident,  or  mistake,  in  certain  cases 
where  certain  kinds  of  documentary  evidence  shows  that 
decision  to  have  been  wrong. 

In  Mahn  v.  Harwood,1  Justice  BRADLEY  said  that  a  good 
defence  to  a  reissue  patent  "  may  be  established  by  show- 
ing from  the  record  that  there  was  no  inadvertence,  acci- 
dent or  mistake  in  drawing  up  the  specification  of  the  orig- 
inal"; and  he  thus  substantially  repeated  what  he  said  in 
James  v.  Campbell. 

In  Coon  v.  Wilson,2  Justice  BLATCHFORD  said  that  a  clear 
mistake,  inadvertently  committed  in  the  wording  of  a  claim, 
is  a  necessary  prerequisite  to  enlarging  that  claim  in  a  re- 
issue ;  and  that  in  the  case  at  bar  there  was  no  such  mis- 
take, because  the  description  warranted  no  other  claim 
than  that  of  the  original  patent.  But  this  case  also  stops 
short  of  deciding  that  the  absence  of  every  statutory 
ground  for  a  reissue  can  always  be  interposed  as  a  defence 
to  an  infringement  suit. 

In  Whitely  v.  Swayne,8  Judge  LEAVITT  decided  that  the 
original  patent  was  not  inoperative  or  invalid  by  reason  of  a 
defective  or  insufficient  specification  ;  and  that  the  reissues 
were  therefore  not  granted  in  accordance  with  the  statute ; 
and  that  when  the  statutory  requirements  relevant  to  re- 
issues are  not  complied  with,  it  is  within  the  power  of  the 
court  and  its  plain  duty  to  hold  the  reissue  void. 

In  Wicks  v.  Stevens,4  Justice  BRADLEY,  when  sitting  in  the 
Circuit  Court  for  the  Eastern  District  of  Texas,  decided 
that  neither  inadvertence,  accident,  nor  mistake  did  in  fact 
cause  the  particular  omission,  in  the  claim  of  the  original 
patent,  which  the  claim  of  the  reissued  patent  supplied  ; 
and  that  therefore  the  latter  claim  could  not  be  sustained. 

1  Mahn  v.  Harwood,  112  U.  S.  3  Whitely  v.  Swayne,  4  Fisher,  123, 

359,  1884.  1865. 

s  Coon  v.  Wilson,  113  U.  S.  277,  4  Wicks  v.  Stevens,  2  Bann.  & 

1884.  Ard.  318,  1876. 


CHAP.  IX.]  EEISSUES.  177 

In  Giant  Powder  Co.  v.  Vigorit  Powder  Co.,1  Justice 
FIELD,  when  sitting  in  the  Circuit  Court  for  the  District  of 
California,  delivered  a  long  opinion  upon  this  subject.  The 
substance  of  that  opinion  appears  to  be,  that  the  Commis- 
sioner has  no  jurisdiction  to  reissue  any  patent,  unless  the 
original  was  chargeable  with  some  of  the  faults  which,  ac^ 
cording  to  the  statute,  make  patents  reissuable  ;  and  that 
if  an  original  patent  shows  on  its  face,  that  it  did  not  have 
either  of  those  faults,  it  is  the  duty  of  the  court  to  hold  any 
reissue  thereof  to  be  void. 

In  Flower  v.  Kayner,"  Judge  NIXON  decided  that  where  an 
original  patent  shows  upon  its  face,  that  no  statutory  ground 
for  a  reissue  existed  therein,  any  reissue  of  that  patent  is 
void,  because  unauthorized  by  law  ;  and  that,  though  the 
decision  of  the  Commissioner  on  this  point  is  presumed  to 
be  correct,  yet  the  courts  are  not  obliged  to  accept  it  as 
final. 

In  Searls  v.  Bouton,3  Judge  WHEELER  entered  a  final  de- 
cree adjudging,  among  other  things,  that  original  letters 
patent  No.  150,195  was  not  inoperative  or  invalid  by  reason 
of  a  defective  or  insufficient  specification,  and  that  the 
Commissioner  had  no  jurisdiction  to  accept  the  surrender 
of  said  original  letters  patent,  and  to  grant  reissue  No.  9297 
thereon  ;  and  that  said  reissue  was  therefore  void. 

In  American  Drill  Co.  v.  Machine  Co.,4  Judge  NATHANIEL 
SHIPMAN  held  a  reissue  patent  to  be  void  because  there  was 
in  the  original  patent  no  error  which  arose  through  inad- 
vertence, accident  or  mistake,  nor  any  defectiveness  or  in- 
sufficiency in  the  specification. 

In  Odell  v.  Stout/  Justice  MATTHEWS  and  Judge  SAGE 
united  in  holding  that  the  granting  of  a  reissue  is  prima 
facie  but  not  conclusive  evidence  of  inadvertence,  accident 
or  mistake. 


1  Giant   Powder    Co.   v.   Vigorit  626,  1881. 

Powder  Co.  6  Sawyer,  508,  1880.  4  American  Diamond  Drill  Co.  n. 

2  Flower  t>.  Rayner,  5  Fed.  Rep.  Machine  Co.  21  Fed.  Rep.  76,  1884. 
793,  1881.  5  Odell  v.  Stout,  22  Fed.  Rep.  161, 

8  Searls  «.  Bouton,  12  Fed.  Rep.  1885. 


178  REISSUES.  [CHAP.  ix. 

§  224.  Great  interests  are  involved  in  the  question  stated 
in  Section  221  and  discussed  in  Sections  222  and  223.  So 
many  patents  have  doubtless  been  reissued  in  cases  where 
the  originals  were  not  in  fact  reissuable,  that  many  hard- 
ships will  surely  follow  the  settlement  of  the  law  upon  the 
point,  and  whether  it  is  settled  for  or  against  the  finality  of 
the  Commissioner's  decision.  If  settled  for  that  finality, 
the  public  will  have  to  pay  tribute  in  a  class  of  cases,  rele- 
vant to  which  it  has  never  consented  thus  to  be  taxed  :  will 
have  to  submit  to  a  class  of  patents  which  have  no  deeper 
foundation  than  the  will  of  the  Commissioner  of  Patents. 
If  the  question  is  finally  settled  against  the  finality  of  the 
Commissioner's  decision,  many  meritorious  inventors  will 
have  been  misled  by  the  obiter  dicta  of  Justices  STORY,  MC- 
LEAN, CLIFFORD,  and  STRONG  into  surrendering  their  valid 
patents,  and  receiving  for  them  nothing  but  worthless 
parchment.  In  view  of  this  dilemma,  it  was  a  misfortune 
that  the  Supreme  Court  did  not  decide  the  question,  when 
it  arose  in  the  case  of  O'Reilly  v.  Morse.  A  single  sentence 
of  decision  in  that  case,  would  have  obviated  pages  of  dicta 
which  have  since  been  scattered  through  many  others,  and 
would  have  authoritatively  guided  the  citizens  upon  a  point 
which  no  amount  of  dicta  can  settle. 

§  225.  To  the  present  text  writer,  the  question  stated  in 
Section  221  appears  to  admit  of  a  plain  and  unassailable 
answer  ;  and  that  answer  is  the  following.  The  decision  of 
the  Commissioner  relevant  to  the  existence  of  a  statutory 
ground  for  a  reissue  is  not  conclusive  in  any  court ;  because 
he  has  no  jurisdiction  to  grant  any  reissue  in  the  absence 
of  such  a  statutory  ground ;  and  because  the  statute  does 
not  make  him  the  final  judge  of  his  own  jurisdiction. 

§  226.  Miller  v.  Brass  Co.,1  is  a  celebrated  case,  which  in- 
troduced a  new  doctrine  into  the  patent  laAvs  of  the  United 
States.  That  doctrine  is  precisely  this.  The  right  to  obtain 
a  broadened  reissue,  is  lost  by  a  long  lapse  of  time,  after 
the  date  of  the  original,  and  before  the  application  for 

1  Miller  0.  Brass  Co.  104  U.  S.  3oO,  1881. 


CHAP.  IX.]  REISSUES.  179 

that  reissue.  If  that  doctrine  has  any  prototype  in  any 
prior  deliverance  of  any  United  States  judge,  that  prototype 
must  be  found  in  a  charge  which  Chief  Justice  TANEY  de- 
livered to  a  jury  somewhat  early  in  his  judicial  career.1 
In  that  case,  the  third  paragraph  of  his  Honor's  instruction 
was  as  follows  :  "  The  plaintiff,  at  the  time  of  his  applica- 
tion for  the  patent  of  1834,  had  a  right  to  surrender  the 
patent  of  1829,  and  take  out  a  corrected  one,  if  the  said 
patent  was  invalid,  either  by  reason  of  the  defective  de- 
scription of  the  improvement,  or  by  reason  of  his  having 
claimed  as  new,  more  than  he  was  entitled  to ;  provided, 
the  error  had  arisen  from  inadvertence  or  mistake,  and  the 
plaintiff  proceeded  to  correct  it  within  a  reasonable  time 
after  it  was  discovered."  The  last  proviso  of  this  instruc- 
tion, differs  from  the  doctrine  of  Miller  v.  Brass  Co.,  in  that, 
the  latter  makes  the  fatal  lapse  of  time  to  begin  at  the  date 
of  the  original  patent,  whereas  the  former  makes  it  to  begin 
when  the  fault  of  the  original  patent  is  discovered.  This 
difference  is  a  substantial  one  ;  because  reissuable  faults  in 
letters  patent  are  often,  and  perhaps  generally,  of  such  a 
character  that  they  can  be  detected  only  by  persons  learned 
in  the  patent  law ;  and  because  a  patentee  may  honestly 
keep  his  patent  by  him  for  years,  without  subjecting  it  to 
professional  scrutiny.  The  doctrine  of  Miller  v.  Brass  Co. 
must  therefore  find  its  foundation  and  genesis  elsewhere 
than  in  the  opinion  of  Chief  Justice  TANEY  ;  and  elsewhere 
than  in  any  United  States  decision  made  and  reported  be- 
fore that  doctrine  was  promulgated  in  that  case  in  January, 
1882. 

But  that  doctrine  has  been  emphatically  reaffirmed  by  the 
Supreme  Court  in  the  use  of  the  following  language.  "  We 
deem  it  proper  to  say,  once  for  all,  that  the  views  announced 
in  Miller  v.  Brass  Co.,  on  the  subject  of  reissuing  patents 
for  the  purpose  of  extending  and  enlarging  the  claim,  were 
deliberately  expressed  and  are  still  adhered  to."  * 

1  Knight  v.  Railroad  Co.  Taney's         *  Malm  «.   Harwood,   112  U.    S. 
Circuit  Court  Decisions,  107,  1840.        358,  1884. 


180  REISSUES.  [CHAP.  ix. 

The  Supreme  Court  has  also  decided  and  announced 
that  the  rule  in  Miller  v.  Brass  Co.  is  not  qualified  by  any 
question  relevant  to  the  presence  or  absence  of  intervening 
rights  of  other  inventors,  accruing  between  the  date  of  the 
original  patent,  and  the  date  of  the  application  for  a  reissue 
thereof ; 1  and  that  Court  has  also  held  that  the  operation 
of  the  rule  is  not  ousted  by  the  fact  that  the  invention  sought 
to  be  covered  by  a  broadened  reissue,  had,  during  the  pre- 
ceding life  of  the  original  patent,  been  apparently,  though 
erroneously,  secured  to  the  same  patentee,  in  another  patent.3 

§  227.  The  length  to  which  delay  must  be  drawn  out,  in 
order  to  lose  the  right  to  apply  for  a  broadened  reissue, 
cannot  be  fixed  and  laid  down  for  all  cases.  Where  the 
specification  is  complicated,  and  the  claim  is  ambiguous  or 
involved,  the  patentee  may  be  entitled  to  greater  indulgence 
than  he  would  be  if  the  case  were  simpler  or  clearer ;  and 
the  courts  will  always  exercise  a  proper  liberality  on  this 
point  in  favor  of  patentees.3  In  Miller  v.  Brass  Co.  itself, 
the  delay  continued  for  fifteen  years.  In  three  later  Supreme 
Court  cases,  the  delay  was  for  fifteen,  fourteen,  and  thirteen 
years,  respectively.4  In  still  later  Supreme  Court  cases 
much  shorter  delays  have  been  held  to  be  fatal  to  broadened 
reissues ;  and  indeed,  in  one  simple  case  where  adverse 
rights  had  intervened,  a  delay  of  ninety-seven  days  was 
decided  to  have  a  fatal  effect  on  such  a  reissue.6  The  gen- 
eral rule  is  that  a  delay  for  two  years  or  more  invalidates 
a  broadened  reissue,  unless  that  delay  is  accounted  for 
and  excused  by  special  circumstances.  What  special  cir- 
cumstances will  have  that  effect  cannot  now  be  stated,  be- 
cause none  such  have  yet  been  found  by  the  Supreme  Court 


1  White  9.  Dunbar,  119  U.  S.  52,  Co.  105  U.  8.  54,  1881;  Bantz  9. 

1886.  Frantz,  105  U.  S.  160,  1881. 

'*  Hartshorn  v.  Barrel  Co.  119  U.  5  Coon  v.  Wilson,  113  U.  S.  277, 

S.  674,  1886.  1884. 

3  Malm®.  Harwood,  112  U.  S.  361,  6  Woolensak  9.  Reiher,  115  U.  S. 
1884.  101,  1884 ;  Hoskin  «.  Fisher,  125  U. 

4  Johnson  9.  Railroad  Co.  105  U.  S.  222,  1887. 
S.  539,  1881;  Mathews  9.  Machine 


CHAP.  IX.]  REISSUES.  181 

to  have  that  operation,  and  because  the  only  case  in  which 
any  Circuit  Court  has  sustained  so  late  a  broadened  reissue,1 
on  account  of  such  circumstances,  has  been  disapproved  in 
the  Supreme  Court."  A  delay  of  less  than  two  years  is 
enough  to  defeat  a  broadened  reissue  in  a  plain  case,  even 
in  the  absence  of  intervening  rights  ; 3  and  in  such  a  case, 
six  months  is  probably  as  long  a  delay  as  can  be  excused." 

§  228,  Keissued  patents  sought  for  and  granted  for  other 
faults  than  insufficient  claims,  will  perhaps  hereafter  be  sub- 
jected to  a  doctrine  of  delay.  If  so,  more  delay  will  probably 
be  required  to  kill  such  patents,  than  is  required  to  kill  a 
broadened  claim,  for  ib  was  said  in  Miller  v.  Brass  Co.  that 
the  correction  of  a  patent,  by  means  of  a  reissue,  where  it 
is  invalid  or  inoperative  for  want  of  a  full  and  clear  descrip- 
tion of  the  invention,  cannot  be  attended  with  such  injurious 
results,  as  follow  from  the  enlargement  of  a  claim ;  and 
hence  a  reissue  may  be  proper  in  such  cases,  though  a  longer 
period  has  elapsed  since  the  issue  of  the  original  patent.  In 
pursuance  of  this  intimation  Judge  BUTLER  has  decided  that 
the  rule  in  Miller  v.  Brass  Co.  does  not  apply  to  cases  where 
reissues  are  granted  to  clarify  or  complete  descriptions  ; s 
and  Judge  HENRY  B.  BROWN  has  decided  that  where  a  claim 
is  doubtful  in  scope  and  is  finally  decided  to  be  too  broad, 
the  fault  may  be  cured  by  a  reissue  regardless  of  the  age  of 
the  patent.6 

§  229.  The  statutory  provision  which  makes  a  patent  void, 
if  the  invention  it  covers  was  in  public  use  or  on  sale  more 
than  two  years  before  that  patent  was  applied  for,  is  a  mat- 
ter which  does  not  apply  to  reissued  patents,  and  the  appli- 
cations therefor.7  The  reissue  application  is  considered  as 

1  Hartshorn  v.  Roller  Co.  18  Fed.  4  McArthur®.  Supply  Co.  19  Fed. 

Rep.  92,  1883.  Rep.  263,  1884. 

s  Hartshorn  v.  Barrel  Co.  119  U.  5  Sewing  Machine  Co.  v.  Frame,  24 

S.  674,  1886.  Fed.  Rep.  596,  1884. 

3  Farmers  Mfg.  Co.  n.  Corn-Plant-  6  Mathews     v.    Flower,    25   Fed. 

er  Co.  128  U.   S.  506,  1888  ;  New  t>.  Rep.  834,  1885. 

Warren,   22   Off.    Gaz.    588,   1882;  '  Shaw  v.  Lead  Co.  11  Fed.  Rep. 

Haines  v.  Peck,  26  Fed.  Rep.  625,  714, 1882. 
1884. 


182  REISSUES.  [CHAP.  i±. 

appended  to  the  original  application,'  and  the  two  years 
cease  to  run  with  the  filing  of  the  latter. 

§  230.  A  surrender  of  a  patent,  when  made  with  an  appli- 
cation for  a  reissue,  need  not  be  made  in  writing ;  and  there- 
fore the  statement  in  a  reissue  that  it  is  a  reissue  of  a  sur- 
rendered former  reissue,  is  not  negatived  by  the  production 
of  a  document  purporting  to  be  a  surrender  of  the  original 
patent,  and  apparently  intended"  to  have  been  a  surrender 
of  the  former  reissue.2  The  presumption  that  the  proper 
patent  was  surrendered,  by  parol  if  not  otherwise,  is  not 
negatived  by  proof  of  an  ineffectual  attempt  to  surrender  it 
in  writing. 

§  231.  Patents  surrendered  prior  to  July  8,  1870,  were 
thereby  cancelled  in  law,  whether  a  reissue  was  granted 
thereon  or  not.3  Patents  surrendered  since  July  8,  1870, 
were  also  cancelled  thereby  if  reissues  were  granted  there- 
on, but  not  otherwise.4  But  a  surrendered  patent  cannot 
be  enforced  while  the  application  for  a  reissue  is  pending.8 
No  damages  or  profits  can  ordinarily  be  recovered,  for  any 
infringement  of  a  surrendered  patent  committed  prior  to  its 
cancellation,  by  means"  of  any  judgment  or  decree  entered 
after  that  time  ;  but  money  recovered  or  voluntarily  paid, 
on  account  of  such  infringement,  prior  to  such  cancellation, 
cannot  be  recovered  back.8  Nor  will  any  such  cancellation 
have  any  effect  upon  any  unpaid  judgment  or  decree  which 
was  entered  before  that  cancellation  took  effect.  The  right 
of  the  patentee,  in  such  a  case,  rests  upon  his  judgment 
or  decree,  and  not  on  his  patent.7  The  decision  just  cited, 
is  a  decision  of  the  Supreme  Court,  delivered  by  Justice 
STRONG,  but  it  was  never  inserted  in  the  Supreme  Court 
reports. 

1  Grant  v.  Raymond,  6  Peters,  218,  Section  53,  p.  206;  Revised  Statutes, 

1832.  Section  4916. 

8  Dental  Vulcanite  Co.  v.  Wether-  B  Burrell  v.  Hackley,  35  Fed.  Rej>. 

bee,  2  Clif.  563,  1866.  833,  1888. 

"Moffitt  0.   Garr,   1  Black,   273,  6  Moffltt  t>.  Garr,   1  Black.   273, 

1861,  Peck  e.  Collins,  103  U.  S.  664,  1861. 

1880.  'Mevs  0.   Conover,  11  Off.  Gaz. 

4  16  Statutes  at  Large,  Ch.  132,  1111,  1876. 


CHAP.  IX.]  EEISSUBS.  183 

The  only  exception,  yet  established,  to  what  the  last  para- 
graph states  is  the  ordinary  rule  relevant  to  profits  and 
damages  which  accrued  from  the  infringement  of  a  surren- 
dered patent  before  its  cancellation,  was  established  in  a 
case  where  the  defendant  infringer  was  himself  the  patentee, 
and  where  the  plaintiffs  were  his  equitable  grantees,  as  to 
that  part  of  the  territory  of  the  United  States,  included 
within  the  boundaries  of  Connecticut  and  New  York.  In 
that  case,  the  patentee  infringed  his  grantee's  rights,  and 
afterward  surrendered  and  reissued  the  patents  involved. 
The  Supreme  Court  decided  that  the  defendant  held  his 
patents,  all  the  time  in  trust  for  the  plaintiffs,  to  the  extent 
of  their  territory ;  and  that  he  must  therefore  account  to 
them  for  the  profits  which  he  had  made  fiyjm  the  use  of 
the  trust  property,  within  that  territory,  regardless  of  the 
fact  that  he  had  surrendered  and  reissued  those  patents, 
after  making  a  part  of  those  profits.1 

§  232.  A  reissued  patent  may  be  surrendered  and  again 
reissued,  under  the  same  circumstances  as  those  which 
make  an  original  patent  reissuable,"  and  the  last  reissue 
may  be  identical  with  the  original  patent.*  So  also,  a 
patent  might  be  reissued  during  its  extended  term,  as  well 
as  during  its  first  term,  when,  as  formerly,  extensions  of 
patents  were  provided  for  by  law.4  But  patents  reissued 
during  their  respective  extended  terms  will  be  more  likely 
to  suffer  from  the  doctrine  of  Miller  v.  Brass  Co.6  than  those 
reissued  during  their  first  terms,  because  of  the  generally 
longer  lapse  of  time  after  the  dates  of  the  originals.  No 
reissue  can  be  granted  of  a  patent  after  its  final  expiration ; 
even  where  that  expiration  resulted  from  the  fact  that  the 
same  invention  had  been  patented  in  a  foreign  country 

1  Littlefield  v.  Perry,  21  Wallace,  27   Fed.   Rep.    291,  1886;    Sawyer 

205,  1874.  Spindle  Co.  «.  Eureka  Spindle  Co. 

*  French  v.  Rogers,  1  Fisher,  136,  33  Fed.  Rep.  836,  1888. 

1851;    Selden  v.  Gas  Burner  Co.  9  4  Wilson  ».  Rousseau,  4  Howard, 

Fed.  Rep.  390,  1881.  646,  1846;  Gibson  v.  Harris.l  Blatch. 

3  Giant     Powder    Co.    v.    Nitro  167,  1846. 

Powder  Co.  19  Fed.  Rep.  510,  1884;  *  Miller  v.   Brass  Co.  104  U.    8. 

Celluloid  Mfg.  Co.  v.  Zylonite  Co.  a^O,  1881. 


184  REISSUES.  [CHAP.  ix. 

before  it  was  patented  in  the  United  States  ;  and  from  the 
fact  that  the  foreign  patent  has  expired,  though  the  United 
States  patent  sought  to  be  reissued,  does  not  appear,  on  its 
face,  to  have  done  so.1 

§  233.  Only  "  the  same  invention"  can  be  covered  by  a 
reissued  patent.2  This  quoted  phrase  occurs,  in  this  rela- 
tion, in  all  the  relevant  statutory  provisions,  now  or  hereto- 
fore in  force  in  the  United  States.  But  neither  of  those 
statutes  obviously  indicate  whether  the  phrase  refers  to 
whatever  invention  was  made  by  the  patentee,  and  actually 
described  in  his  original  application ;  or  refers  to  whatever 
invention  was  substantially  suggested,  indicated  or  de- 
scribed in  the  patentee's  original  letters  patent,  drawing  or 
model;  or  refers  to  whatever  invention  was  described  or 
indicated  in  the  original  letters  patent  or  drawing  of  the 
patentee  ;  or  refers  to  whatever  invention  was  described  by 
him  in  his  original  letters  patent ;  or  refers  to  whatever  in- 
vention was  described  in  the  original  letters  patent,  and 
appears  therein  to  have  been  intended  to  be  secured  thereby  ; 
or  refers  to  whatever  invention  was  actually  claimed  by  the 
inventor  in  his  original  patent.  During  many  years,  debate 
ranged  in  the  Courts  around  these  various  constructions ; 
and  large  masses  of  obiter  dicta  and  many  actual  adjudica- 
tions can  be  collected  out  of  the  books  in  favor  of  each  of 
them.  But  the  Supreme  Court  put  a  period  to  the  contro- 
versy in  the  case  of  the  Parker  &  Whipple  Co.  v.  The  Yale 
Clock  Co.  decided  in  1887. 3  That  decision  adopted  the 
fifth  of  the  above  stated  constructions,  and  thus  established 
the  meaning  of  the  phrase  "  the  same  invention"  to  be 
whatever  invention  was  described  in  the  original  letters 
patent,  and  appears  therein  to  have  been  intended  to  be 
secured  thereby.  This  rule  has  already  been  repeatedly 
reaffirmed  and  reapplied  by  the  Supreme  Court,4  and  is  now 

1  C.  W.  Siemens'  Appeal,  11  Off.       Statutes,  Section  4916. 

Gaz.  1107,  1877.  3  Parker  &  Whipple  Co.  «.  Yale 

2  Patent  Act  of  1832,  Section  3;  Clock  Co.  123  U.  S.  99,  1887. 
Patent  Act  of  1836,  Section  13;  Pat-  4  Hoskins  v.  Fisher,  125  U.  S.  223, 
ent  Act  of  1870,  Section  53;  Revised  1837;  Flower  v.  Detroit,  127  U.  S. 


CHAP.  IX.]  EEISSUES.  185 

as  well  established  as  its  companion  rule  in  Miller  v.  Brass 
Co.  Therefore  no  reissue  claim  can  stand  any  longer  upon 
a  model  alone,  nor  even  alone  upon  a  drawing  of  an  original 
patent ; '  and  indeed  neither  models,  drawings  nor  descrip- 
tions, nor  all  of  them  together  can  support  a  reissue  claim, 
except  where  the  description  in  the  original  letters  patent 
shows  that  the  invention  covered  by  that  claim  was  in- 
tended to  be  secured  in  the  original. 

§  239.  The  last  clause  of  Section  4916,  of  the  Eevised 
Statutes,  provides,  that  "  when  there  is  neither  model  nor 
drawing,  amendments  may  be  made  upon  proof  satisfactory 
to  the  Commissioner  that  such  new  matter  or  amendment 
was  a  part  of  the  original  invention,  and  was  omitted  from 
the  specification  by  inadvertence,  accident,  or  mistake." 
The  meaning  of  that  clause  is  not  perfectly  known  ;  but  it  is 
known  not  to  enlarge  the  power  of  the  Commissioner,  in 
reference  to  the  invention  for  which  a  reissue  may  be 
granted." 

§  240.  The  provision,  first  enacted  in  1870,3  that  "  no  new 
matter  shall  be  introduced  into  the  specification"  is  merely 
another  way  of  saying  that  a  reissued  patent  shall  be  for 
the  same  invention  as  the  original.4  That  provision,  there- 
fore, neither  enlarged  nor  restricted  the  reissuability  of 
letters  patent ;  and,  accordingly,  it  is  not  new  matter, 
within  its  meaning,  to  state  a  new  use  of  the  invention 
shown  in  the  original  ; 5  nor  to  explain,  in  a  reissue,  the 
operation  of  a  device  which  in  the  original  was  only  de- 
scribed ; "  nor  to  vary  the  description  of  anything  described 
in  the  original.7 


571,  1887;  Pattee  Plow  Co.  «.  King-  98  U.  S.  138,  1378. 

man  &  Co.  129  U.  S.  294,  1889.  6  Broadnax  v.  Transit  Co.  5  Bann. 

1  Hailes  «.   Stove   Co.  123  U.  S.  &  Ard.  611,  1880. 

587,  1887.  8  Putnam  v.  Yerrington,  2  Bann. 

2  Powder  Co.  v.  Powder  Works,  &  Ard.  243,   1876:  Potter  v.   Stew- 
98  U.  S.  128,  1878.  art,  18  Blatch.  561,  1881. 

3 16  Statutes  at  Large,  Ch.  230,  7  O'Reilly  v.  Morse,  15  Howard, 

Section  53,  p.  206.  62,  1853. 
4  Powder  Co.  v.  Powder  Works, 


186  REISSUES.  [CHAP.  ix. 

§  242.  Reissued  patents,  which  were  granted  on  the  sur- 
render of  former  reissues,  must  be  able  to  endure  com- 
parison, on  the  point  of  identity  of  invention,  not  only  with 
the  original  letters  patent,  but  also  with  the  surrendered 
reissues,  which  preceded  them.' 

§  243.  There  is  a  legal  presumption  that  the  necessary 
identity  of  invention  exists  in  all  reissued  patents  ;  and  that 
presumption  controls  the  point,  unless  the  contrary  is 
shown  to  be  true."  That  can  be  done  only  by  introducing 
the  original  letters  patent  in  evidence.3 

§  244.  To  omit  from  a  reissue,  anything  which  the  orig- 
inal specification  stated  to  be  essential  to  the  invention,  is 
fatal  to  identity  of  invention.4  Indeed,  it  has  been  held  in 
one  case  that  the  omission  of  one  bolt  from  a  reissue  patent 
for  a  reaper  and  mower,  was  enough  to  negative  identity 
with  the  original,  because,  with  the  bolt,  the  machine  was  a 
reaper  only,  and  not  a  mower.3  A  process  is  not  the  same 
invention  as  a  machine  which  may  perform  that  process," 
and  a  process  consisting  of  one  stage  is  not  the  same 
as  a  process  consisting  of  that  stage  and  one  or  more 
others.7  Where,  however,  an  original  patent  described  and 
claimed  several  different  inventions,  one  or  more  of  those 
inventions  may  be  omitted  from  the  claims  of  a  reissue  of 
that  patent.8  It  is  necessary  to  the  requisite  identity  of  in- 
vention, that  the  reissue  should  claim  no  invention  not  de- 
scribed and  intended  to  be  claimed  in  the  original ;  but  it 
is  not  necessary  to  that  identity,  that  the  original  should 
describe  or  claim  no  invention  not  described  or  claimed  in 
the  reissue. 

1  Knight  v.  Railroad  Co.  Taney's      10  Fed.  Rep.  286,  1880. 

Circuit  Court  Decisions,  106,  1840.  5  Kirby  v.   Mfg.    Co.   10  Blatch. 

2  O'Reilly  v.   Morse,   15  Howard,      307,  1872. 

62, 1853;  Klein  «.  Russell,  19  Wai-  «  Eachus  c.  Broomall,  115  U.  8. 

lace,  433,  1873.  436,  1885. 

3  Seymour  v.    Osborne,    11   Wai-  '  Wood-Paper  Patent,  23  Wallace, 
lace,  516,  1870.  599,  1874. 

4  Gill  «.   Wells,   23   Wallace,    1,  8  Rubber  Co.  v.  Goodyear,  9  Wal- 
1874 ;    Russell  v.   Dodge,  93  U.    S.  lace,  788,  1869. 

460,  1876;  Atwood  v.  Portland  Co. 


CHAP.  IX.]  BEISSUES.  187 

§  245.  A  sub-combination  may  be  claimed  in  a  reissue,  if 
it  was  shown  in  the  original  as  performing  the  same  func- 
tion ;  even  though  it  was  claimed  in  the  original  only  as  a 
part  of  a  larger  combination.1  But  a  sub-combination  can- 
not be  legally  claimed  in  a  reissue,  if  it  is  there  shown  to 
perform  a  substantially  different  function  from  any  which 
it  could  perform  in  its  original  environment.2  In  the  former 
case  the  invention,  consisting  of  the  sub-combination,  ex- 
isted in  the  original  specification.  In  the  latter  case,  the 
sub-combination  may  have  existed  in  the  original,  but  it  did 
not  compose,  in  that  place,  the  same  invention  which  it  con- 
stitutes in  the  reissue. 

§  246.  A  single  device  may  also  be  made  the  subject  of  a 
separate  claim  in  a  reissue,  though  in  the  original  it  was 
claimed  only  in  combination  with  other  devices ;  provided 
that  device  was  a  new  and  useful  invention  of  the  patentee, 
and  might  have  been  separately  claimed  by  him  in  the 
original  patent,  and  appears  therein  to  have  been  intended 
to  be  secured  thereby.3 

§  247.  Whether  a  patentee,  in  effecting  a  reissue,  may  de- 
scribe an  equivalent  of  one  of  the  elements  of  the  originally 
patented  combination,  and  may  claim  the  combination 
broadly  enough  to  cover  that  equivalent,  is  a  question  which 
depends  upon  the  effect,  in  particular  cases,  of  the  applica- 
tion of  the  rule  in  Miller  v.  Brass  Co.  Where  such  a  re- 
issue is  applied  for  promptly  after  the  granting  of  the 
original  patent,  it  may  be  sustained  ; 4  but  the  right  to  ob- 
tain such  a  reissue,  is  lost  by  long  lapse  of  time  after  the 

1  Battiu  v.  Taggert,  17  Howard,  kins  «.   Stetson,  32  Fed.  Rep.  398, 

74,   1854;    Corn-Planter  Patent,  23  1887. 

Wallace,  181,  1874;  Jordan  v.  Dob-  *  Gill  v.  Wells,  22  Wallace,  24, 
son,  4  Fisher,  232,  1870;  Pearl  v.  1874;  Johnson  v.  Railroad  Co.  105 
Ocean  Mills,  2  Bann.  &  Ard.  469,  U.  S.  539,  1881. 
1877;  Herring  ®.  Nelson,  3  Bann.  &  3  Parker  &  Whipple  Co.  v.  Yale 
&  Ard.  55,  1877;  Kerosene  Lamp  Clock  Co.  123  U.  S.  87.  1887;  Gal- 
Heater  Co.  v.  Littell,  3  Bann.  &  lahue  v.  Butterfield,  10  Blatch.  237, 
Ard.  312,  1878;  Turrell  v.  Spaeth,  3  1872. 

Bann.   &  Ard.   461,  1878;  Odell  «.  4  McArthur  v.  Supply  Co.  19  Fed. 

Stout,  22  Fed.  Rep.  163,  1884;  Jen-  Rep.  263,  1884. 


188  EEISSUES.  [CHAP.  ix. 

date  of  the  original,  and  before  the  application  for  that  re- 
issue.1 

§  248.  Reissue  patents  are  not  to  be  held  void  for  want 
of  identity  with  the  originals,  where  a  liberal  construction 
of  the  two  documents  can  avert  that  result.3  Courts  are 
accordingly  inclined,  where  claims  apparently  illegal  are 
inserted  in  reissue  patents,  to  modify  those  claims  by  con- 
struction, in  order  to  make  them  conform  to  propriety.3 
This  inclination  is  not,  however,  to  be  relied  upon,  in  a  case 
where  a  patent  was  surrendered  and  reissued  solely  to 
broaden  its  claim,  and  where  the  broadened  claim  is  void 
for  want  of  novelty,  as  well  as  for  want  of  identity  with  the 
original  invention.4 

§  249.  Where  some,  but  not  all,  of  the  claims  of  a  re- 
issue patent  are  void  because  they  are  obnoxious  to  the 
doctrine  of  Miller  v.  Brass  Co.,  or  because  they  are  not  for 
the  same  invention  as  the  original ;  that  fact  does  not  vitiate 
the  other  claims  of  that  patent.  The  reissue  will,  in  either 
of  those  cases,  have  whatever  validity  it  would  have  had  if 
it  had  not  contained  the  invalid  claims,  provided  there  is  no 
unreasonable  delay  to  file  a  proper  disclaimer.6 

§  250.  Executors,  administrators  or  assigns  have  the  same 
right  to  surrender  and  reissue  a  patent,  that  the  patentee 
himself  has  ; 6  except  that  in  the  case  of  assigns  of  patents 
which  were  assigned  by  the  patentee  after  July  8,  1870,  the 
application  must  be  made,  and  the  new  specification  be 
signed,  by  the  inventor  himself  if  living.7  The  exemption 
from  this  law,  of  all  patents  granted  and  assigned  before 
July  8,  1870,  is  not  to  be  found  in  the  Patent  Act  of  that 

1  White  v.  Dunbar,  119  U.  S.  51,  1882;  Gould  v.  Spicer,  15  Fed.  Rep. 
1886.  344,  1882;  Cote  v.  Moffitt,  15  Fed. 

2  Milligan  &  Higgins  Glue  Co.  v.  Rep.  845,  1882;  Schillinger  v.  Brew- 
Upton,  1  Barm.  &  Ard.  505,  1874.  ing  Co.  24  Off.  Gaz.  495,  1883;  Na- 

3  Mfg.  Co.  •».  Ladd,  102  U.  S.  412,  tional  Pump  Cylinder  Co.  v.  Gunni- 
1880;  Brainard  v.  Cramme,  12  Fed.  son,  17  Fed.  Rep.    812,  1883;  Have- 
Rep.  624,  1882.  meyer».  Randall,  21  Fed.  Rep.  405, 

4  Wisner  v.    Grant,    7  Fed.    Rep.  1884. 

922, 1880.  e  Revised  Statutes,  Section  4916. 

5  Gage  v.  Herring,  107  U.  S.  640,          ">  Revised  Statutes,  Section  4895. 


CHAP.  IX.]  BEISSUES.  189 

date.  It  was  first  enacted  March  3, 1871 ; :  but  it  expressly 
applied,  by  retroactive  operation,  to  all  reissues  of  the  kind, 
that  were  granted  between  July  8,  1870,  and  March  3, 1871. 
Of  course,  it  applies  by  prospective  operation,  to  all  reis- 
sues of  the  kind  granted  since  the  latter  date.  In  cases 
where  the  patent  was  granted  and  assigned  by  the  patentee, 
before  July  8,  1870,  the  inventor  need  take  no  part  in  the 
application  for  a  reissue,  even  though  the  applicant  received 
his  assignment  from  an  intermediate  owner  after  that  day.* 
It  however  always  was,  and  still  is,  proper  for  the  patentee 
to  make  the  application  for  a  reissue,  instead  of  his  assignee 
doing  so ;  provided  it  be  done  with  the  knowledge  and  con- 
sent of  the  latter,  or  provided  the  latter  ratifies  the  applica- 
tion, after  it  is  made.3  The  title  to  the  reissued  patent  will, 
in  such  a  case,  vest  at  once  in  the  assignee,  by  operation  of 
the  assignment  of  the  original  patent,  and  without  the  exe- 
cution of  any  new  document.4 

§  251.  Where  several  executors  are  appointed  in  a  will 
but  only  one  of  them  receives  letters  testamentary,  a  pat- 
ent of  the  testator  may  be  lawfully  reissued  to  that  execu- 
tor, and  the  legal  title  to  the  reissued  patent  will  thereupon 
vest  exclusively  in  him.5  A  grant  of  a  reissue  to  a  person 
as  administrator,  is  conclusive  evidence  in  an  infringement 
suit  that  the  person  was  in  fact  administrator ; "  and  the 
same  rule  doubtless  applies  as  well  to  executors.  A  reissue 
to  a  person  in  trust  for  the  heirs  at  law  of  the  patentee,  will 
confer  the  legal  title  to  the  reissue  upon  that  person,  and 
the  equitable  title  upon  the  persons  beneficially  interested, 
whoever  they  may  be.T 

1  16  Statutes  at  Large,  Ch.  132,  p.  5  Rubber  Co.  t.  Goodyear,  9  WaU 
583.  lace,  788,  1869. 

2  Selden  v.  Gas-Burner  Co.  9  Fed.  •  Woodwortk  V.  Hall,  1  Woodbury 
Rep.  390,  1881.  &  Minot,  248,  389,  1846;  Goodyear 

3  Dental  Vulcanite  Co.  ».  Wether-  v.  Hullihen,  3  Fisher,  251,  1867. 
bee,  2  Cliff.  563, 1866;  Wing  v.  War-  '  Woodworth  v.  Stone,  3  Story, 
ren,  5  Fisher,  548,  1872.  752,  1845;  Northwestern  Fire  Ex- 

4  Woodworth  t>.    Hall,    1   Wood-  tinguisher  Co.  t.  Philadelphia  Fire 
bury  and  Minot,  248,  389, 1846;  Me-  Extinguisher  Co.  1  Bann.  &  Ard. 
Burney  t.   Goodyear,  11    Cushing  177,  1874. 

(Mass.),  569,  1853. 


190  REISSUES.  [CHAP.  ix. 

§  252.  An  assignee  of  a  patent  is  a  person  to  whom  the 
entire  legal  interest,  or  an  undivided  part  of  the  entire  legal 
interest,  in  a  patent,  has  been  duly  assigned  by  an  instru- 
ment in  writing.  A  grantee  differs  from  an  assignee,  in  that 
the  rights  conveyed  to  him,  are  confined  to  a  part,  or  to 
parts  of  the  territory  of  the  United  States.  A  licensee  is 
one  who  receives  either  an  exclusive  or  a  concurrent  right 
to  make  or  to  use  or  to  sell  the  thing  covered  by  the  patent.1 
A  reissue  may  be  granted  to  an  assignee  of  the  executor  or 
administrator  of  the  patentee ; 2  or  to  an  assignee  of  an  as- 
signee ; 3  or  indeed  to  an  assignee  of  any  degree,  however 
far  removed  from  the  original  patentee  by  mesne  assign- 
ments ; 4  and  if  the  reissued  patent  recites  those  assignments 
it  becomes  at  least  prima  facie  evidence  thereof,  in  an  in- 
fringement suit.5  If  a  patent  is  owned  jointly  by  two  or 
more  patentees,  or  by  two  or  more  assignees,  or  by  one  or 
more  patentees  and  one  or  more  assignees,  all  the  owners 
must  join  in  a  reissue,  or  must  ratify  it,  or  it  will  be  void  ; 
but  neither  grantees  nor  licensees  are  required  to  do  either." 
The  right  of  a  patentee  or  assignee  to  receive  a  reissue  is 
not  affected  by  his  having  made  grants,  or  issued  licenses 
under  his  patent ; 7  but  where  a  patentee  grants  away  his 
rights  in  a  part  of  the  territory  of  the  United  States,  and 
afterward  conveys  the  residue  to  another  vendee,  it  is  doubt- 
ful whether  that  vendee  is  entitled  to  apply  for  a  reissue.8 

§  253.  Grantees  may  continue  to  hold  their  rights  under 
an  original  patent  after  it  is  surrendered  and  reissued  by 
the  patentee  or  assignee ;  or  they  may  take  corresponding 
rights  under  the  reissued  patent.  They  have  their  choice 

1  Sections  274,  287,  and  296  of  this      Brandt,  3  Fisher,  218,  1867. 

book.  s  p0tter  v.  Holland,  4  Blatch.  206, 

2  Carew  v.  Fabric  Co.  1  Holmes,      1858;  Forbes  n.  Stove  Co.  2  Cliff. 
45,  1871.  379,  1864;  Meyer  v.  Bailey,  2  Bann. 

8  Swift  v.  Whisen,  2  Bond,  115,  &  Ard.  73.  1875. 

1867.  i  Smith  ®.  Mercer,  3  Penn.  L.  J. 

4  Selden  »  Gas-Burner  Co.  9  Fed  Reports,  529,  1846. 

Rep.  390,  1881.  8  Commissioner    of     Patents    v. 

6  Middletown  Tool  Co.  u.  Judd,  3  Whiteley,  4  Wallace,  522,  1866. 
Fisher,    141,    1867;    Hoffheins    v. 


CHAP.  IX.]  REISSUES.  191 

between  the  two.1  It  follows  from  this  rule,  that  in  theory 
at  least,  a  given  invention  may  be  the  subject  of  letters  pat- 
ent in  one  part  of  the  United  States,  at  the  same  time  that 
it  is  free  to  the  public  in  other  parts  of  the  country.  If  this 
were  a  practical  result,  it  would  be  highly  unjust,  because 
it  would  operate  to  prohibit  given  manufactures  in  one 
State,  while  in  another  State  the  same  pursuits  would  be 
free  to  all.  In  fact  however,  patentees  or  assignees  seldom 
surrender  any  claims  which  it  is  worth  while  for  any  inter- 
ested person  to  retain  ;  and,  on  the  other  hand,  grantees  are 
generally  ready  to  ratify  and  adopt  broadened  reissues.  It 
may  hereafter  happen,  that  in  order  to  retain  his  rights  of 
action  for  accrued  damages  or  profits,  or  in  order  to  avoid 
the  risk  of  exchanging  a  valid  original  patent  for  a  reissue 
patent  of  uncertain  validity,  now  and  then  a  grantee  will 
elect  to  continue  to  hold  under  the  original,  while  the  pat- 
entee holds  under  a  reissue  patent.  If  such  cases  become 
numerous  and  important  they  will  probably  lead  to  a  change 
in  the  statute.  The  remedy  would  be  to  prohibit  reissues 
of  original  patents  relevant  to  which  any  assignment  or 
grant  shall  have  been  made,  or  to  enact  that  in  such  cases, 
all  the  assignees  and  grantees  shall  join  in  the  surrender. 

§  254.  The  legal  effect  of  a  valid  reissue  patent  has  always 
been  the  same,  under  the  different  statutes  which  have  from 
time  to  time  been  in  force.  The  phraseology  of  the  Act  of 
1832  in  this  respect  was  as  follows  :  "  Such  new  patent,  so 
granted,  shall,  in  all  respects,  be  liable  to  the  same  matters 
of  objection  and  defence  as  any  original  patent.  But  no 
public  use  or  privilege  of  the  invention  so  patented,  derived 
from  or  after  the  grant  of  the  original  patent,  either  under 
any  special  license  of  the  inventor,  or  without  the  consent 
of  the  patentee  that  there  shall  be  a  free  public  use  thereof, 
shall,  in  any  manner,  prejudice  his  right  of  recovery  for  any 
use  or  violation  of  his  invention  after  the  grant  of  such  new 
patent  as  aforesaid." *  The  language  of  the  Act  of  1836  on 

1  Washburn   v.  Gould,    3   Story,      4  Blatch.  206,  1858. 
122,  1844;  Woodworth  <o.  Stone.  3        •»  4  Statutes  at  Large,  Ch.  162,  Sec- 
Story,  749,  1856;  Potter  v.  Holland,      tion  3,  p.  559. 


192  EEISSUES.  [CHAP.  ix. 

this  point  was  as  follows :  "  The  patent,  so  reissued,  together 
with  the  corrected  description  and  specification,  shall  have 
the  same  effect  and  operation  in  law,  on  the  trial  of  all  ac- 
tions hereafter  commenced  for  causes  subsequently  accru- 
ing, as  though  the  same  had  been  originally  filed  in  such 
corrected  form." ' 

It  follows  from  these  provisions,  that  a  reissued  patent  can- 
not be  affected,  in  point  of  novelty,  by  anything  done  after 
the  date  of  the  original  application.  Novelty  still  dates 
from  the  original  invention.8  Nor  will  any  invention  pro- 
duced after  that  time,  be  taken  into  account  as  showing  the 
state  of  the  art,  and  therefore  as  being  relevant  to  the  ques- 
tion of  construction  of  a  reissued  patent.'  On  the  other 
hand,  when  reissued  patents  are  introduced  in  evidence  to 
negative  the  novelty  or  limit  the  scope  of  other  patents, 
they  operate  as  of  their  own  dates,  and  not  as  of  the  dates  of 
the  originals.4 

It  follows  also  from  the  foregoing  statutory  provisions, 
that  persons  who  use  or  sell,  after  the  date  of  a  reissued 
patent,  specimens  of  the  thing  covered  by  it,  are  liable  as 
infriugers  ;  even  though  those  persons  made,  or  bought,  or 
used  those  specimens  before  that  date,  and  when,  on  ac- 
count of  the  omission  to  cover  them  by  the  original  patent, 
they  had  a  legal  right  to  appropriate  the  invention.' 

1  5  Statutes  at  Large,  Ch.  357,  Sec-      King,  17  Blatch.  64,  1879. 

tion  13,  p.  122.  6  Stimpsonc.  Railroad  Co.  4How- 

2  Grant®.  Raymond,  6 Peters,  218,  ard,  380,  1846;  Agawam  Co.  v.  Jor- 
1832.  dan,  7  Wallace,  609,  1868;  Carr  v. 

3  Carroll  v.  Morse,  9  Off.  Gaz.  453,  Rice,  1  Fisher,  211,  1856;  Bliss  t>. 
1876.  Brooklyn,  8  Blatch.  534,  1871. 

4  United  States  Stamping  Co.  v. 


CHAPTER  X. 


EXTENSIONS. 


255.  Constitutional    foundation   of 
extensions. 

256.  Congressional  extensions. 

257.  Mode  of  Congressional  exten- 
sion. 

258.  Effect  of  Congressional  exten- 
sions. 

259.  Patent  Office  extensions. 

260.  Statutory  foundation  of  Patent 
Office  extensions. 

261.  Who  might  apply  for  Patent 
Office  extensions. 

262.  Points  of  time  whereon  Pat- 
ent Office  extensions  were  grant- 
able. 

263.  Patent  Office  extension  might 
be  granted  to  an  inventor-pat- 
entee,  even  if  he  had  parted 
with  all  interest  in  the  first  term 
of  his  patent. 


264.  Patent  Office  extensions  gran  ta- 
ble only  where  inventors  would 
possess,  or  at  least  participate  in, 
the  benefit  thereof. 

265.  Patent   Office   extension,   how 
effectuated. 

266.  Force  of  the   Commissioner's 
decision  in  extension  cases. 

267.  Facts  which  justify  extensions. 

268.  Proceedings  preliminary  to  ex- 
tensions. 

269.  Remedy  for  fraud  in  procuring 
or  in  granting  extensions. 

270.  "  The  benefit  of  the  extension  of 
a  patent  shall  extend  to  the  as- 
signees and  grantees  of  the  right 
to  use  the  thing  patented,  to  the 
extent  of  their  interest  therein." 

271.  Adjudged  meaning  of  the  stat- 
ute quoted  in  the  last  section. 


§255.  THE  constitutional  provision  relevant  to  the  dura- 
tion of  patent  rights,  is  that  such  rights,  when  granted, 
shall  be  granted  for  limited  times.1  The  Patent  Act  of 
1790*  provided,  that  under  the  circumstances  and  condi- 
tions prescribed  therein,  the  Secretary  of  State,  and  the  Sec- 
retary of  War,  and  the  Attorney-General,  or  any  two  of  them, 
might  issue  letters  patent  for  an  invention,  for  any  term 
not  exceeding  fourteen  years.  The  same  provision  was 
made  in  the  Patent  Act  of  1793.3  Under  that  law,  patents 


1  Constitution  of  the  United  States, 
Article!.  Section  8. 
*  1  Statutes  at  Large,  Ch.  7,  Sec- 


tion 1,  p.  109. 

3  1  Statutes  at  Large,  Ch  11,  Sec- 
tion 1,  p.  321. 

193 


194  EXTENSIONS.  [CHAP    X. 

were  generally,  if  not  universally,  granted  for  the  full  four- 
teen years  ;  but  whether  so  granted  or  not,  there  was,  prior 
to  1832,  no  mention  in  the  statutes  of  any  way  in  which  any 
patent,  ones  granted,  could  be  extended,  and  its  duration 
thus  prolonged.  In  July  of  the  last-mentioned  year,  it  was 
enacted :  "  That  application  to  Congress  to  prolong  or  re- 
new the  term  of  a  patent,  shall  be  made  before  its  expira- 
tion." '  The  same  section  also  provided  a  method  of  pro- 
ceeding, to  be  followed  by  applicants  in  such  cases.  The 
entire  section  was,  however,  merely  a  self-imposed  limita- 
tion on  a  constitutional  power  of  Congress :  the  power  to 
promote  the  progress  of  science  and  useful  arts,  by  secur- 
ing for  limited  times,  to  inventors  the  exclusive  right  to 
their  respective  inventions.  Inasmuch  as  Congress  could 
disregard  that  limitation  in  any  particular  case,"  the  section 
was  not  one  of  great  importance,  even  while  it  remained  on 
the  statute  book ;  and  it  was  repealed  by  the  Patent  Act  of 
July  4,  1836. 3  Since  that  date,  the  extending  of  patents  by 
Congress,  has  been  regulated  by  no  other  law  than  the  Con- 
stitution. 

§  256.  Patents  may  be  extended  by  Congress  at  any  time, 
either  before  or  after  their  expiration.4  This  power  was 
exercised  as  early  as  1808. B  In  one  later  case  such  an  ex- 
tension was  granted  nearly  three  years  before  the  then 
existing  exclusive  right  was  to  expire ;"  and  in  another, 
more  than  twenty-one  years  intervened  between  the  expira- 
tion of  the  original  term  of  the  patent,  and  the  granting  of 
the  extension.7  Congressional  extensions,  when  granted, 
are  usually  granted  for  the  term  of  seven  years ;  but  they 
may  lawfully  be  granted  for  any  limited  length  of  time, 
whether  longer  or  shorter  than  that. 

1  4  Statutes  at  Large,  Ch.  162,  Sec-  bott,  407,  1870 ;  The  Fire  Extin- 

tion  2,  p.  559.  guisher  Case,  21  Fed.  Rep.  42,  1884. 

s  The  Fire  Extinguisher  Case,  21  5  Evans  «.  Jordan,  9  Cranch,  199, 

Fed.  Rep.  42,  1884.  1815. 

3  5  Statutes  at  Large,  Ch.  857,  Sec-  *  Bloomer  v.  McQuewan,  14  How- 
tion  21,  p.  125.  ard,  539,  1852. 

4  Bloomer  v.  Stolley,  5  McLean,  7  Aguwam  Co.  v.  Jordan,  7  Wal- 
161,  1850 ;  Jordan  v.  Dobson,  2  Ab-  lace,  583,  1868. 


CHAP.   X.]  EXTENSIONS.  195 

§  257.  Some  special  acts,  for  the  extension  of  patents, 
merely  extend  their  duration  by  a  simple  legislative  edict, 
and  do  no  more.1  Others  instruct  the  Commissioner  of 
Patents  to  ascertain  the  truth  relevant  to  sundry  questions 
of  fact  mentioned  therein ;  and  authorize  him  to  decide 
whether  in  view  of  those  facts,  and  of  sundry  considera- 
tions of  justice  and  of  public  policy,  the  patent  ought  to  be 
extended ;  and  direct  him  to  extend  it,  if  his  decision  is  in 
the  affirmative."  When  patents  are  extended  in  this  latter 
method,  those  provisions  of  the  special  act  which  limit  the 
operation  of  the  extension,  need  not  be  recited  in  the  cer- 
tificate of  extension,  which  the  Commissioner  indorses  upon 
the  patent  or  otherwise  puts  forth.  The  law  reads  the  cer- 
tificate in  the  light  of  that  statute,  without  any  such  recital.3 

§  258.  Special  Acts  of  Congress  granting  or  authorizing 
extensions  of  patents,  come  within  the  general  rule,  that 
the  validity  of  a  statute  cannot  be  questioned  in  courts,  on 
any  allegation  that  its  passage  was  procured  by  fraud  or 
bribery.4  Such  Acts  are  considered  as  engrafted  on  the 
general  patent  laws,  and  are  to  be  construed  in  connection 
with  them.5  Although  the  Constitution  authorizes  Congress 
to  grant  exclusive  rights  in  inventions  only  to  inventors, 
Congress  may  provide,  when  exercising  its  power  in  par- 
ticular cases,  that  assignees  of  the  inventors  shall  have  the 
same  rights  under  the  extended  term,  that  they  had  under 
the  original  term  of  the  patent  extended.' 

§  259.  Patent  Office  extensions  of  patents,  were  first  au- 
thorized by  the  Patent  Act  of  July  4, 1836.7  By  the  Patent 
Act  of  March  3, 1861,  they  were  prohibited,  as  to  all  patents 


1  Bloomer  v.  McQuewan,  14  How-  1850. 

ard,  539,  1852  ;  Woodworth  ».  Ed-  &  Bloomer  v.  McQuewan,  14  How- 
wards,  3  Woodbury  and  Minot,  123,  ard,  539,  1852;  Jordan  «.  Dobson,  2 
1847.  Abbott,  408,  1870. 

J  Agawam  Co.  n.  Jordan,  7  Wai-  '  Blanchard's  Gun-Stock  Turning 

lace,  583,  1868.  Factory  v.  Warner,  1   Blatch.  259, 

3  Agawam  Co.  «.  Jordan,  7  Wai-  1848. 

lace.  583,  1868.  '  5  Statutes  at  Large,   Ch.   357, 

4  Gibson  v.  Gifford,  1  Blatch.  529,  Section  18,  p.  124. 


196  EXTENSIONS. 

thereafter  granted.1  The  last  extension  of  the  kind,  was 
granted  in  1875,  and  expired  in  1882.  It  is  improbable 
that  any  general  law,  authorizing  such  extensions,  will  ever 
again  be  enacted  in  the  United  States.  Inasmuch,  however, 
as  actions  are  still  liable  to  be  brought  for  past  infringe- 
ments of  some  of  those  formerly  in  force,  and  also  because 
part  of  the  rules  and  doctrines  of  law  established  in  suits 
for  infringements  of  Patent  Office  extensions,  are  equally 
applicable  to  suits  based  on  Congressional  extensions,  it  is 
expedient  to  explain  those  rules  and  doctrines  in  this  book. 
§  260.  The  Patent  Act  of  1836  provided,2  that  whenever 
any  patentee  of  an  invention  should  desire  an  exten- 
sion of  his  patent,  he  might  make  application  therefor  in 
writing,  to  the  Commissioner  of  the  Patent  Office,  setting 
forth  the  grounds  thereof ;  and  that  the  Commissioner 
should  thereupon,  and  on  the  payment  of  a  specified  fee, 
cause  to  be  published  a  notice  of  the  application,  and  of 
the  time  and  place  when  and  where  the  same  would  be  con- 
sidered. The  Secretary  of  State,  the  Commissioner  of  the 
Patent  Office,  and  the  Solicitor  of  the  Treasury,  were  con- 
stituted a  board  to  hear  and  decide  upon  the  evidence  pro- 
(Juced  before  them  both  for  and  against  the  extension.  If, 
upon  such  hearing  in  any  particular  case,  it  appeared  to  the 
board,  having  a  due  regard  to  the  public  interest,  that  it  was 
just  and  proper  that  the  term  of  the  patent  should  be  ex- 
tended by  reason  of  the  patentee,  without  neglect  or  fault 
on  his  part,  having  failed  to  obtain  from  the  use  and  sale 
of  his  invention,  a  reasonable  remuneration  for  the  time, 
ingenuity  and  expense  bestowed  upon  the  same,  and  upon 
its  introduction  into  public  use ;  the  statute  made  it  the 
duty  of  the  Commissioner  to  extend  the  patent,  by  making 
a  certificate  thereon  of  such  extension,  for  the  term  of  seven 
years  from  and  after  the  expiration  of  the  first  term.  The 
statute  also  provided  that  no  such  extension  should  be 
granted  after  the  expiration  of  the  term  for  which  it  was 


1  12  Statutes  at  Large,   Ch.   88,          8  5  Statutes  at  Large,  Ch.  357,  Sec- 
Sections  16,  p.  249.  tion  18,  p.  124. 


CHAP.  X.]  EXTENSIONS.  197 

originally  issued  ;  and  that  when  so  extended,  a  patent 
should  have  the  same  effect  in  law  as  though  it  had  been 
originally  granted  for  the  term  of  twenty-one  years ;  and 
that  the  benefit  of  such  renewal  should  extend  to  assignees 
and  grantees  of  the  right  to  use  the  thing  patented,  to  the 
extent  of  their  respective  interests  therein. 

The  Patent  Act  of  1848 1  amended  the  above  provisions 
by  vesting  the  power  of  the  board,  in  the  Commissioner  of 
Patents  alone ;  and  by  directing  him  to  take  into  consider- 
ation the  original  patentability  and  novelty  of  the  inventions 
covered  by  patents  sought  to  be  extended,,  as  well  as  to  be 
governed  by  the  rules  and  principles  that  had  theretofore 
governed  the  board. 

No  other  change  was  ever  made  in  the  statute  relevant  to 
the  subject,  until  in  1861  it  was  repealed  as  to  future 
patents.  As  to  patents  granted  before  March  2,  1861,  it 
was  re-enacted  in  the  Patent  Act  of  1870, "  and  again  re- 
enacted  in  the  Revised  Statutes.3  In  both  these  re-enact- 
ments, one  provision  is  found,  which  did  not  exist  in  the 
former  law,  namely  the  provision  that  the  application 
should  be  filed  not  more  than  six  months  nor  less  than 
ninety  days  before  the  expiration  of  the  original  term  of 
the  patent. 

§  261.  The  statutes  relevant  to  extensions  have  all  men- 
tioned "  patentees"  as  being  persons  entitled  to  apply  for 
extensions,  and  have  mentioned  no  others.  When  the  first 
of  those  statutes  was  enacted  in  1836,  nobody  but  an  in- 
ventor or  his  executor  or  administrator,  could  be  a  patentee. 
In  1837,  however,  Congress  enacted,  that  any  patent  there- 
after issued,  might  be  made  and  issued  to  the  assignee  or 
assignees  of  the  inventor.4  In  all  subsequent  cases,  where 
that  course  was  pursued,  the  inventors  and  the  patentees 
were  not  the  same  persons ;  but  no  corresponding  change 
was  ever  made  in  the  statute  relevant  to  extensions.  The 

1  9  Statutes  at  Large,  Ch.  47,  Sec-  3  Revised  Statutes,  Sections  4924 

tion  1,  p.  231.  to  4928. 

4 16  Statutes  at  Large,  Ch.  230  ;  4  5  Statutes  at  Large,  Ch.  45,  Sec- 
Sections  63  to  67,  p.  208.  tion  6,  p.  193. 


198  EXTENSIONS.  [CHAP.  X. 

question  has  therefore  arisen,  whether,  in  such  cases,  it  was 
the  inventor  who  had  a  right  to  apply  for  an  extension,  or 
whether  the  patentee  was  the  person  who  had  that  right,  or 
whether  both  the  inventor  and  the  patentee  must  have 
joined  in  such  an  application.  Where  the  inventor  would 
have  an  equitable  interest  in  the  extension  if  granted,  it  was 
proper  for  him  to  apply  for  that  extension  alone.1  When 
granted,  the  legal  title  to  such  an  extension,  would  vest  in 
the  patentee,  because  such  an  extension  was  in  the  nature 
of  an  amendment  of  his  patent ;  but  the  equitable  title 
might  vest  wholly  in  the  inventor,  or  vest  partly  in  the  in- 
ventor and  partly  in  the  patentee,  or  vest  partly  in  the  in- 
ventor and  partly  in  third  persons,  according  to  the  equi- 
table facts  of  each  case.  When  the  inventor  would  have  no 
equitable  interest  in  the  extension  if  granted,  no  extension 
could  be  obtained,  either  on  his  application,  or  on  that  of 
the  patentee,  or  on  that  of  both  together  ;  because  it  was 
not  the  intention  or  scope  of  the  statute  to  grant  extensions 
of  patents  for  the  sole  benefit  of  others  than  the  inventors 
of  the  things  secured  thereby." 

Whether  the  executor  or  administrator  of  an  inventor- 
patentee,  had  a  right  to  apply  for  an  extension,  was  the  first 
of  the  ten  questions  which  were  submitted  to  the  Supreme 
Court  in  the  celebrated  case  of  Wilson  v.  Rousseau.  That 
question  was  argued  in  the  affirmative  by  Webster,  Seward 
and  Latrobe,  and  decided  in  the  affirmative  by  the  court.3 

Where  a  joint  patent  was  taken  out  by  joint  inventors,  all 
had  to  join  in  an  application  for  an  extension  of  that  pat- 
tent,  if  all  were  living ;  and  if  any  were  dead,  the  legal 
representatives  of  the  deceased  had  to  unite  in  such  an 
application.4 

§  262.  No  Patent  Office  extension  was  ever  grantable  after 
the  expiration  of  the  original  term.6  Such  extensions  could 

1  Sayles  v.  Dubuque  and  Sioux          3  Wilson  v.  Rousseau,  4  Howard, 
City  Railroad  Co.  3  Bann.  &  Ard.      673.  1846. 

220,  1878.  4  Wickersham's  Case,  4  Off.  Gaz. 

2  Wilson  v.  Turner,  Taney's  Cir-      155,  1873. 

cuit  Court  Decisions,  292,  1845.  5  Act  of  1836,  Section  18;  Act  of 


CHAP.  X.]  EXTENSIONS.  199 

be  granted  at  any  time  before  the  midnight  at  the  end  of  the 
last  day  of  that  term ;  because  fourteen-year  patents  did 
not  expire  till  the  last  hour,  of  the  fourteenth  anniversary 
of  the  day  of  their  respective  dates.1  Patents  limited  in 
law  to  the  term  of  fourteen  years  from  the  date  of  earlier 
foreign  patents,  were  extendible,  at  the  discretion  of  the 
Commissioner  of  Patents,  as  well  as  those  not  so  limited ; 2 
but  in  such  a  case  the  extension  had  to  be  granted  before 
the  expiration  of  the  foreign  patent,  even  though  the  ex- 
tended patent  purported  on  its  face  to  run  for  some  time 
longer.* 

§  263.  Whether  an  inventor -patentee  needed  to  possess 
any  interest  in  the  first  term  of  his  patent  at  the  time  of 
applying  for  an  extension  thereof,  was  the  fifth  question 
submitted  to  the  Supreme  Court  in  the  case  of  Wilson  v. 
Rousseau.4  That  question  was  decided  in  the  negative. 
Even  where  the  assignee  of  the  first  term  of  a  patent  surren- 
dered and  reissued  it,  the  inventor-patentee  had  a  right  to 
ignore  the  reissue,  and  to  apply  for  and  receive  an  exten- 
sion of  the  original  patent.5 

§  264.  It  was  against  the  policy  of  the  law,  if  not  against 
its  letter,  to  extend  any  patent,  in  the  extension  of  which,  if 
granted,  the  inventor  would  have  no  property  right.  The 
right  to  an  extension  was  given  by  the  law,  chiefly  with  a 
view  to  the  advantage  of  the  inventor,  and  not  of  his  assignee 
or  grantee.8  It  never  was  necessary,  however,  that  the  in- 
ventor should  be  in  a  condition  to  receive  the  legal  title  to 
the  extension,  or  even  that  the  entire  equitable  estate  in  it, 
should  belong  to  him.  An  interest  in  the  proceeds  of  the 
exclusive  right  during  the  extended  term,  was  enough  to 


1870,  Section  63;  Revised  Statutes,  4  Wilson  «.  Rousseau,  4  Howard, 

Section  4924.  673,  1846. 

'Johnsons.  McCullough, 4  Fisher,  5  Potter  v.  Braunsdorf,  7  Blatch. 

170,  1870.  97, 1869;  Crompton®.  Belknap  Mills, 

2  Tilghman  v.  Mitchell,  9  Blatch.  3  Fisher,  536,  1869. 

27,  1871.  6  Wilson  «.  Turner,  Taney's  Cir- 

3  New  American  File  Co.  v.  Nichol-  cuit  Court  Decisions,  292,  1845. 
son  File  Co.  8  Fed.  Rep.  816, 1881. 


200  EXTENSIONS.  [CHAP.  x. 

satisfy  the  policy  of  the  law  in  this  respect.1  Even  where 
the  original  patent  was  granted  to  an  assignee,  and  where 
the  extension  was,  therefore?  in  point  of  legal  title,  a  pro- 
longation of  his  patent,  the  extension  was  held  to  be  valid, 
because  the  inventors  had  interests  in  its  proceeds.2  More- 
over, inventors  are  presumed  in  law  to  have  had  a  sufficient 
interest  to  support  extensions  actually  granted,  unless  the 
contrary  is  proved  to  have  been  the  fact.3 

§  265.  The  certificate  of  extension  which  was  provided 
for  by  the  statute,4  was  generally  indorsed  on  the  original 
parchment  letters  patent ;.  but  where  the  original  document 
was  lost  or  was  out  of  the  control  of  the  person  applying 
for  the  extension,  that  certificate  was  indorsed  upon  a  certi- 
fied copy  of  the  letters  patent  and  was  equally  valid.6 

§  266.  Jurisdiction  to  extend  a  particular  patent,  was  ac- 
quired by  the  Commissioner,  under  the  statutes  in  force 
prior  to  July  8,  1870,  whenever  the  proper  person  filed  an 
application  for  such  an  extension,  and  paid  the  requisite 
fee  ; "  provided  the  application  was  filed,  and  the  fee  paid, 
long  enough  before  the  expiration  of  the  original  term  of 
the  patent,  to  enable  the  Commissioner  to  investigate  the 
matter  in  the  way  prescribed  by  statute.7  After  July  8, 1870, 
the  law  remained  the  same  on  this  point,  except  that  under 
the  statute  of  that  date,  and  under  the  Revised  Statutes, 
the  application  had  to  be  filed  not  more  than  six  months, 
nor  less  than  ninety  days  before  the  first  term  of  the  patent 
would  expire.8  The  jurisdiction  always  depended,  there- 
fore, upon  the  application  being  filed  and  the  fee  paid  by 
the  proper  person  at  the  proper  time.  The  decision  of  the 


1  Gear  <o.   Grosvenor,   1   Holmes,  108,  1869. 

215,  1873.  6  Gear  ®.   Grosvenor,  1  Holmes, 

2  Sayles  ».   Dubuque  and   Sioux  218,  1873. 

City  Railroad  Co.  3  Bann.  &  Ard.  7  Agawam  Co.  «.  Jordan,  7  Wal- 

220,  1878.  lace,  583,  1868. 

3  Ruggles  v.  Eddy,  10  Blatch.  56,  8 16  Statutes  at  Large,  Ch.  230, 
1872.  Section  63.  p.  208;  Revised  Statutes, 

4  Patent  Act  of  1836,  Section  18.  Section  4924. 
6  Potter  v.  Braunsdorf,  7  Blatch. 


CHAP.  X.]  EXTENSIONS.  201 

Commissioner,  relevant  to  the  existence  of  his  jurisdiction, 
was  never  conclusive  in  any  case.1  The  validity  of  a  Patent 
Office  extension,  is  therefore  open  to  inquiry  in  an  infringe- 
ment suit,  when  it  is  questioned  on  the  theory  that  the 
person  who  applied  for  it,  was  not  such  a  person  as  had 
the  legal  right  to  do  so.  In  deciding  that  question,  how- 
ever, the  courts  regard  with  respect  the  practical  construc- 
tion of  the  statute,  which  was  necessarily  involved  in  the 
granting  of  the  extension.2  Indeed  the  Supreme  Court  has* 
held  that  the  practical  construction  given  to  a  statute,  by 
the  executive  branch  of  the  government  charged  with  its 
execution,  is  entitled  to  great  weight,  when  the  true  mean- 
ing of  that  statute  is  drawn  into  judicial  inquiry.3 

§  267.  The  meritorious  facts  which  entitled  an  inventor- 
patentee  to  a  Patent  Office  extension  were  that,  without  fault 
or  neglect  on  his  part,  he  had  failed  to  obtain  from  the  use 
and  sale  of  his  invention,  a  reasonable  remuneration  for  the 
time,  ingenuity,  and  expense  bestowed  upon  it,  and  upon  its 
introduction  into  public  use.4  Unlike  the  foundation  facts 
which  entitle  a  patentee  to  a  reissue,  these  points  are  not 
required  by  the  statute  to  exist  absolutely.  The  statutory 
provision  is  that  they  shall  appear  to  the  satisfaction  of  the 
Commissioner  of  Patents.  It  is  therefore  immaterial  whether 
the  courts  are  satisfied  of  their  existence  or  not.  The  fact 
that  a  particular  extension  was  granted,  shows  that  the  Com- 
missioner was  satisfied  of  the  existence  of  those  facts  in  that 
case ;  and  evidence  that  they  did  not  in  fact  exist,  is  there- 
fore inadmissible  in  a  suit  for  infringement  of  the  patent 
during  that  extension.5 

§  268.  The  statute  made  it  the  duty  of  the  Commissioner 
to  advertise  all  applications  for  extensions,  and  to  refer  such 
cases  to  the  principal  examiner  having  in  charge  the  class  of 


1  Wilson  D.  Rousseau,  4  Howard,  4  Patent  Act  of  1836,  Section  18; 

687,  1846.  Patent  Act    of    1870,    Section   66 ; 

*  Brooks  v.  Bicknell,  3  McLean,  Revised  Statutes,  Section  4927. 

250,  1843.  5  Clum  v.  Brewer,  2  Curtis,  506, 

3  Grant  v.  Raymond,  6  Peters,  244,  1855;  Jordan  v.  Dobson,  2  Abbott, 

1832.  408.  1870. 


202  EXTENSIONS.  [CHAP.  x. 

inventions  to  which  the  patent  sought  to  be  extended  be- 
longed, and  having  received  the  report  of  the  examiner,  to 
hear  and  decide  each  particular  case  at  the  time  and  place 
designated  in  the  advertisement.  All  these  provisions 
were  directory,  and  none  of  them  were  jurisdictional.  The 
validity  of  no  extension  could  therefore  be  affected  by 
proof,  in  an  infringement  suit,  that  some  or  all  of  those 
acts  were  omitted  by  the  Commissioner,  or  were  irregularly 
performed.1 

§  269.  No  fraud,  practised  upon  or  by  the  Commissioner, 
relevant  to  securing  or  granting  an  extension,  can  ever  be- 
come the  subject  of  inquiry  in  any  suit  for  infringement. 
The  decision  of  the  Commissioner,  in  granting  an  extension, 
does  not,  however,  foreclose  all  inquiry  into  allegations  of 
fraud,  as  it  does  into  allegations  of  inadvertence,  error,  or 
ministerial  irregularity.  The  law  is  not  so  absurd  as  to 
make  a  man's  own  decision  that  he  has  committed  no  fraud, 
and  suffered  none  to  be  committed  upon  him,  a  conclusive 
adjudication  of  that  point.  But  charges  so  grave  deserve  a 
special  proceeding  for  their  investigation.  They  are  not 
to  be  bandied  about  as  collateral  makeweights  in  infringe- 
ment suits.  When  investigated,  they  must  be  investigated 
in  a  special  proceeding  brought  to  repeal  the  grant  of  the 
extension.2 

§  270.  "  The  benefit  of  the  extension  of  a  patent  shall 
extend  to  the  assignees  and  grantees  of  the  right  to  use  the 
thing  patented,  to  the  extent  of  their  interest  therein."  3 
This  enactment,  in  almost  precisely  the  same  words,  has 
always  found  a  place  in  statutes  relevant  to  extensions  of 
patents.4  The  meaning  of  this  law  was  never  learned  from 
its  perusal.  It  is  one  of  the  cases  in  which  persons  who 
could  neither  think  nor  write  with  precision  or  with  clear- 
ness, were  put  to  penning  statutes  for  a  nation.  It  is  an 

1  Brooks  v.  Jenkins,  3  McClean,      lace,  796,  1869;  Mowry  v.  Whitney, 
435,  1844;  Colt  0.  Young,  2  Blatch.      14  Wallace,  434,  1871. 

473,  1852;  Tilghman  «.  Mitchell,  9         3  Revised  Statutes,  Section  4928. 
Blatch.  27,  1871.  4  Patent  Act  of  1836,  Section  18; 

2  Rubber  Co.  v.  Goodyear,  9  Wai-      Patent  Act  of  1870,  Section  67. 


CHAP.  X.]  EXTENSIONS.  203 

instance  in  which  Congress  made  a  law  for  millions,  without 
having  any  accurate  idea  of  the  nature  of  the  law  it  was 
making.  The  duty  of  ascribing  a  definite  meaning  to  the 
enactment,  devolved,  therefore,  upon  the  courts.  But  the 
clause  was  so  ambiguous  that  the  judges  could  not  agree  in 
regard  to  it.  A  provision  which  should  have  been  put  be- 
yond question  by  a  competent  and  faithful  Congress,  when 
it  was  enacted  in  1836,  was  still  a  subject  of  controversy  in 
the  Supreme  Court  more  than  thirty-seven  years  later. 
Now  that  more  than  fifty  years  have  passed  since  its  enact- 
ment, the  text  writer  can  collate  the  adjudicated  cases,  and 
can  deduce  and  state  the  adjudicated  meaning  of  the  clause. 
That  meaning  is  as  follows. 

§  271.  Every  person  who,  at  the  beginning  of  any  extended 
term  of  any  patent,  has  a  right  to  use  a  particular  specimen 
of  any  thing  covered  by  that  patent,  has  the  same  right  to 
use  that  specimen  during  that  extended  term,  unless  his 
right  was  expressly  limited  so  as  not  to  include  that  term  ; 
and  if  such  a  person  is  the  owner  of  such  a  specimen,  he 
may  sell  it  to  be  used  by  others  during  that  extension.1 

The  limitations  expressed  in  this  rule  are  not  to  be  over- 
looked. 1.  It  applies  only  to  persons  whose  right  to  use 
existed  at  the  time  of  the  extension.  It  has  therefore  been 
the  practice  of  some  patentees  to  avoid  the  rule  altogether, 
by  making  their  licenses  expire  a  day  or  more  before  the 
end  of  the  existing  terms  of  their  respective  patents.  2. 
The  rule  confers  no  right  upon  any  person  on  account  of  his 
having  had  a  right  to  make  or  sell  specimens  of  the  patented 
thing.  3.  The  rule  does  not  apply  to  any  patent  for  a  pro- 
cess.2 4.  The  rule  confers  no  right  under  an  extension,  that 

1  Wilson  «.  Rousseau,  4  Howard,  Woodworth  v.  Curtis,  2  Woodbury 

677,  1846;  Bloomer  v.  McQuewan,  and  Minot,  524,  1847;   Goodyear  ®. 

14  Howard,  539,  1852  ;  Chaffee  ».  Rubber  Co.  1  Clif.  349,  1859;  Woos- 

Belting  Co.  22  Howard,  217,  1859;  ter  v.  Sidenberg,  13  Blatch.  88, 1875; 

Bloomer  ».    Millinger,    1   Wallace.  Black  v.  Hubbard,  3  Bann.  &  Ard. 

340,  1863;  Mitchell  v.   Hawley,  16  39,  1877. 

Wallace,     544,     1872  ;    Eunson    «.  s  Wetherill  v.  Zinc  Co.  6  Fisher, 

Dodge,  18  Wallace,  414. 1873;  Paper-  50,  1872. 
Bag    Cases,   105  U.    S.   766,   1881; 


204  EXTENSIONS.  [CHAP.  x. 

did  not  exist  under  the  former  term.  Accordingly,  if  the 
former  right  was  subject  to  a  royalty,  the  right  under  the 
extension  will  be  subject  to  the  same  royalty.1  5.  The  rule 
confers  no  right  to  make  or  use  or  sell  any  new  specimen  of 
the  patented  thing  ; 2  though  it  does  confer  a  right  to  repair 
the  articles  to  which  it  applies.3  6.  The  rule  does  not  apply 
where  the  right  to  use,  when  granted  by  the  patentee,  was 
expressly  limited  to  the  existing  term  of  the  patent.4  The 
right  provided  by  the  rule  of  this  section  is  a  property 
right ;  and  the  specimens  to  which  it  refers,  and  the  right 
to  use  those  specimens,  may  therefore  be  transferred  by 
sale,  devise,  levy  of  execution,  or  assignment  in  insolvency.6 


1  Union  Mfg.  Co.  v.  Lounsbury,  Clif.  435,    1865;  Farrington  v.  De- 

41  New  York,  363,  1869.  troit,  4  Fisher,  216,  1870. 

*  Hodge  v.  Railroad  Co.  6  Blatch.  4  Mitchell  v>  Hawley,  16  Wallace, 

165,  1868;  Wood  v.  Railroad  Co.  2  544,  1872. 

Bissell,  62,  1868.  B  Woodworth  v.  Curtis,  2  Wood- 

3  Wilson  v.  Simpson,  9  Howard,  bury  and  Minot,  524,  1847. 
109,  1850;  Aiken  v.  Print  Works,  2 


CHAPTEK  XL 


TITLE. 


272.  The  nature  of  titles,  and  the 
methods  of  their  acquisition. 

273.  Title  by  occupancy. 

274.  Title  by  assignment. 

275.  Characteristics,  authentication, 
and  effect  of  assignments. 

276.  Dormant  assignments. 

277.  Assignments  of  rights  of  action 
for  past  infringements. 

278.  Construction  of  assignments. 

279.  Reformation  of  assignments. 

280.  Assignments  of  extensions. 

281.  Recording  and  notice. 

282.  Warranty  of  title. 

283.  No  implied  warranty  of  validity. 


284.  Express  warranties  of  validity. 

285.  Equitable  titles;  how  created. 

286.  Equitable  titles;  how  treated. 

287.  Title  by  grant. 

288.  Extra-territorial  rights  convey- 
ed by  grants. 

289.  Title  by  creditor's  bill. 

290.  Title  by  bankruptcy. 

291.  Title  by  death. 

292.  Tenancy  in  common.     Joint- 
tenancy. 

293.  Joint  tenancy;  how  severed. 

294.  Rights  of  tenants  in  common  as 
against  each  other. 

295.  Partition. 


§  272.  TITLES  to  patent  rights  are  capable  of  two  inde- 
pendent classifications.  One  relates  to  the  nature  of  title  ; 
and  the  other  relates  to  the  methods  by  which  title  may  be 
acquired.  In  the  first  of  these  aspects,  titles  are  divisible 
into  those  which  are  purely  legal,  those  which  are  purely 
equitable,  and  those  which  are  both  legal  and  equitable. 
In  the  second  aspect,  they  are  divisible  into  those  :  1.  By 
occupancy.  2.  By  assignment.  3.  By  grant.  4.  By  cred- 
itor's bill.  5.  By  bankruptcy.  6.  By  death.  Titles  which 
are  both  legal  and  equitable  may  be  acquired  in  either  of 
these  methods.  Titles  which  are  purely  equitable  may  be 
acquired  by  either,  except  the  first ;  and  those  which  are 
purely  legal  may  be  transferred  by  either,  except  the  first, " 
fourth  and  fifth.  It  is  the  plan  of  this  chapter,  to  treat  the 
subject  of  title  under  this  sixfold  division  ;  and,  in  general, 
to  treat  it  with  a  view  to  title  which  is  both  legal  and  equi- 
table, and  is  therefore  complete ;  but  also,  to  incorporate 

205 


206  TITLE.  [CHAP.  xi. 

into  that  treatment,  such  statements  as  may  show  the  rela- 
tions which  purely  legal  and  purely  equitable  titles  bear  to 
each  other,  and  to  the  law  ;  and  to  conclude  the  whole  with 
a  discussion  of  such  points  as  relate  to  patent  rights  owned 
contemporaneously  by  a  plurality  of  persons. 

§  273.  Title  by  occupancy  is  that  title  to  a  patent,  which 
a  person  may  acquire  by  inventing  any  new  and  useful  pro- 
cess, machine,  manufacture,  or  composition  of  matter,  and 
by  applying  for  and  obtaining  a  patent  thereon.  During 
the  space  of  time  between  the  day  of  invention  and  the 
date  of  letters  patent  therefor,  that  title  is  inchoate,  but  is 
nevertheless  recognized  by  both  law  and  equity.1  Such  an 
inchoate  right  may  be  assigned  ;  and  an  assignment  thereof 
will  convey  the  legal  title  to  the  letters  patent,  as  soon  as 
the  letters  patent  are  granted.4  This  rule  applies  not  only 
to  cases  where  the  assignments  are  recorded  before  the 
granting  of  the  patents,3  but  also  to  cases  where,  though  ex- 
ecuted before,  they  are  not  recorded  till  after  that  event.4 
So  also  it  applies  to  cases  where  applications  are  divided 
after  they  are  assigned,6  and  to  cases  where  the  assign- 
ments are  executed  after  applications  for  patents  are  re- 
jected, and  before  those  rejections  are  reversed.'  The  in- 
choate right  to  a  Patent  Office  extension  of  a  patent,  when 
such  a  right  was  provided  by  law,7  was  also  a  proper  sub- 
ject of  assignment,  even  while  it  remained  inchoate ; *  and 
such  an  assignment  also  operated  to  convey  the  legal  title 
to  such  an  extension,  whenever  such  an  extension  was 
granted  by  the  Commissioner  of  Patents.9 

The  title  by  occupancy,  which  an  inventor  acquires  when 


1  Gayler  ®.  Wilder,  10  Howard,  5  Puetz  v.  Bransford,  31  Fed.  Rep. 

493,  1850 ;  Hendrie  «.  Sayles,  98  U.  461,  1887. 

S.  551,  1878.  G  Gay  9.   Cornell,  1   Blatch.  510, 

*  Gayler  c.  Wilder,  10  Howard,  1849. 

493, 1850.  '  From  July  4,  1836,  to  March  2, 

3  Consolidated  Electric  Light  Co.  1861. 

0.  Edison  Electric  Light  Co.  25  Fed.  8  Nicolson  Pavement  Co.  «.  Jen- 
Rep.  719,  1885.  kins,  14  Wallace,  456,  1871. 

4  United  States  Stamping  Co.  ».  *  Railroad    Co.    v.    Trimble,    10 
Jewett,  7  Fed.  Rep.  869,  1880.  Wallace,  380,  1870. 


CHAP.   XI.]  TITLE.  207 

he  invents,  is  not  affected  by  the  fact  that  he  is  at  the  time 
in  the  employ  of  another  ; '  for  persons  employed,  as  much 
as  employers,  are  entitled  to  their  own  independent  inven- 
tions." The  original  title  of  a  patentee  to  a  patent  issued 
to  him,  is  presumed  to  continue  till  he  is  shown  to  have 
parted  with  it  ;s  and  the  grantee  named  in  a  reissue  patent 
is  presumed  to  be  the  lawful  owner  of  that  patent,  until  he 
is-shown  not  to  have  owned  the  patent  which  he  surren- 
dered in  order  to  obtain  that  reissue,  or  is  shown  to  have 
parted  with  the  title  to  the  reissue  after  that  date/ 

§  274.  An  assignment  of  a  patent  is  an  instrument  in 
writing,  which,  in  the  eye  of  the  law,  purports  to  convey 
the  entire  title  to  that  patent,  or  to  convey  an  undivided 
share  in  that  entire  title,5  or  at  least  the  entire  title,  or  an 
undivided  share,  in  the  invention  covered  by  a  particular 
claim.6  Such  assignments  usually  purport  to  convey  the 
entire  right  secured  by  the  patent ;  and  therefore  they 
cover  the  exclusive  right  to  make,  to  use,  and  to  sell  the 
patented  invention  throughout  the  United  States.  It  has, 
however,  been  held  that  an  assignment  which  purports  on 
its  face  to  convey  the  exclusive  right  to  make  and  sell  the 
invention  covered  by  the  patent,  is  a  full  assignment  of  that 
patent,  because  an  expressed  exclusive  right  to  make  and 
sell,  carries  with  it  an  implied  exclusive  right  to  use,  the 
subject-matter  of  the  patent,7  and  the  same  result  follows 
with  still  more  force,  from  an  assignment  of  the  exclusive 
right  to  make,  use  and  sell,  and  to  vend  to  others  to  use 
and  sell.8  Assignments  of  legal  titles  to  patents  must  be  in 
writing,  because  the  statute  provides  no  other  method  of 
effecting  such  an  assignment ; 9  and  because  since  patent 

1  Hapgood  v.  Hewitt,  119  TJ.  S.  5  Gayler  v.  Wilder,   10  Howard, 

226,   1886;    Whiting    v.    Graves,    3  477,    1850;    Potter    v.    Holland,    4 

Bann.  &  Ard.  222,  1878;   Hapgood  Blatch.  211,  1858. 

v.  Hewitt,  11  Fed.  Rep.  422,  1882.  fi  Pope  Mfg.    Co.  e.  Mfg.    Co.  34 

»  Agawam  Co.  t.  Jordan,  7  Wai-  Fed.  Rep.  894.  1888. 

lace,  583,  1868.  7  Nellis  «.  Mfg.  Co.  13  Fed.  Rep. 

3  Fischer  v.  Neil,  6  Fed.  Rep.  89,  451,  1882. 

1881.  8  Pickhardt  v.   Packard,  22  Fed. 

4  Washburn  &  Moen  Mfg.  Co.  0.      Rep.  530.  1884. 

Haish,  4  Fed.  Rep.  900,  1880.  '  Revised  Statutes,  Section  4898. 


208  TITLE.  [CHAP.  xi. 

rights  are  creatures  of  statute  and  not  of  common  law,  the 
transfer  of  the  legal  title  thereto  cannot  be  regulated  by 
the  rules  of  the  latter  system.1  It  seems,  however,  that  an 
equitable  title  may  be  created  by  parol,2  and  if  such  a  title 
can  be  created  by  parol,  it  may,  perhaps,  by  parity  of  rea- 
soning, be  transferred  by  the  same  method.  But  a  recital 
in  a  writing,  that  a  particular  person  is  an  owner  with  the 
subscriber  of  a  patent  granted  to  the  latter,  is  not  even  an 
equitable  assignment.8 

Titles  conveyed  by  assignments  are  usually  unconditional ; 
but  they  may  also  be  held  upon  special  tenures.  One  in- 
stance of  such  a  tenure  is  presented  where  the  assignment 
contains  a  condition  that  the  assignee  shall  pay  a  specified 
royalty  to  the  assignor  during  the  life  of  the  patent  as- 
signed.4 And  other  estates  than  a  complete  one  may  be 
created  in  patents  by  assignments.  An  estate  for  years, 
and  an  estate  in  remainder,  are  examples  of  these.* 

§  275.  The  patent  assigned  ought  to  be  described  in  the 
assignment  by  its  number  and  date,  and  by  the  name  of  the 
patentee,  and  by  the  name  of  the  invention  which  it  pur- 
ports to  cover  ;  but  an  assignment  will  be  valid  though  it  is 
lacking  or  erroneous  in  one  or  more  of  these  particulars,  if 
the  description  which  it  contains  excludes  doubt  as  to  the 
patent  intended  to  be  conveyed.6  The  designation  of  the 
assignee  in  an  assignment  is  also  sufficient  where  the  per- 
son intended  can  be  identified,  even  where  evidence  outside 
of  the  assignment  is  required  for  that  purpose.7  An  assign- 
ment of  an  invention  or  patent  for  a  machine,  will  not  con- 
vey any  patent  for  a  process  in  the  performance  of  which 

1  Gayler  v.  Wilder,  10  Howard,  6  Case  v.  Morey,  1  New  Hamp- 

498,  1850.  shire,  349,  1818;  Holden  v.  Curtis, 

8  Whiting  v.  Graves,  3  Bann.  &  2  New  Hampshire,  63,  1819;  Har- 

Ard.  225,  1878.  mon  v.  Bird,  22  Wendell  (N. Y.),  113, 

3  Kearney  v.  Railroad  Co.  27  Fed.  1839;  Hill  v.  Thuermer,  13  Indiana, 
Rep.  701,  1886.  351,  1859. 

4  Littlefield  v.  Perry,  21  Wallace,  '  Fisk  Clark  &  Flagg  v.  Hollan- 
220,  1874.  der,   MacArthur   &   Mackay,    860, 

5  Solomons  v.   United  States,   21  1883. 
Court  of  Claims,  481,  1886. 


CHAP.  XI.]  TITLE.  209 

that  machine  finds  its  only  utility.1  An  assignment  by  a 
natural  person  requires  no  other  authentication  than  the 
assignor's  signature ;  and  where  such  an  assignment  is  ex- 
ecuted by  an  attorney  in  fact,  it  must  be  executed  in  the 
name  of  the  assignor,  and  cannot  lawfully  be  executed  by 
the  attorney  in  his  own  name."  Assignments  are  some- 
times acknowledged  before  magistrates ;  but  if  such  an 
acknowledgment  is  of  any  value,  it  is  so  merely  because  it 
obviates  the  necessity  of  proving  the  signature  of  the  as- 
signor, and  if  it  obviates  that  necessity,  it  does  so  by  virtue 
of  the  law  of  the  particular  State  in  which  it  is  acknowl- 
edged.3 An  assignment  by  a  corporation  needs  not  to  be 
authenticated  by  its  corporate  seal,  but  is  properly  exe- 
cuted, if  executed  in  the  name  and  by  the  authority  of  the 
corporation,  and  by  a  proper  officer,  who  signs  for  the  cor- 
poration, and  signs  as  an  officer  thereof."  An  assignment 
to  a  corporation  confers  no  title  upon  any  stockholder 
therein  ;5  and  an  assignment  to  a  corporation  which  is  not 
organized  till  after  the  date  of  the  assignment  will,  at  least 
by  way  of  estoppel,  inure  to  its  benefit  when  organized, 
and  will  be  good  as  against  the  assignor.8 

A  married  woman,  an  infant,  or  a  person  under  guardian- 
ship may  be  the  assignee  of  an  invention  or  of  a  patent. 
Such  persons  may  also  assign  their  inventions  or  patents  by 
complying,  not  only  with  the  United  States  law  which  re- 
quires assignments  of  patents  to  be  in  writing,  but  also 
with  those  laws  of  their  particular  States  which  govern 
analogous  acts  of  such  persons.7 

§  276.  An  assignment  for  which  the  consideration  was 
never  paid,  and  which  was  never  acted  upon  by  either  of 


1  Down  ton  c.  Mfg.  Co.  9  Fed,  Rep.  4  Gottfried  v.  Miller,  104  U.  S.  527, 

402,  1879;  Downton  «.  Allis,  9  Fed.  1881. 

Rep.  771,  1881.  5  Gottfried  «.  Miller,  104  U.  S.  528, 

*Machesney  «.   Brown,   29  Fed.  1881. 

Rep.  145,  1886.  6  Dyer  v.  Rich,  1  Metcalf  (Mass.), 

'  New  York  Pharmical  Associa-  180,  1840. 

tion  v.  Tilden,  14  Fed.   Rep.   740,  '  Fetter  v.  Newhall,  17  Fed.  Rep. 

1882.  843,  1883. 


210  TITLE.  [CHAP.  xi. 

the  parties  thereto,  conveys  no  title  to  the  assignee ; '  but 
no  assignment  which  has  been  acted  upon  by  the  parties 
thereto  can  be  revoked  on  the  ground  of  a  partial  failure  to 
pay  the  promised  price.8 

§  277.  Bights  of  action  for  past  infringements  of  a  patent 
are  not  conveyed  by  any  mere  assignment  of  that  patent ; s 
but  they  may  be  conveyed  by  any  assignment  which  pur- 
ports to  convey  them,  whether  that  document  purports  also 
to  convey  the  patent,4  or  purports  to  convey  the  rights  of 
action  alone.5 

§  278.  The  construction  of  assignments  depends  primarily 
upon  the  meaning  of  all  the  language  in  which  they  are 
composed,  rather  than  upon  that  of  any  particular  words 
they  contain ; 6  and  if  that  language  is  clear  in  the  eye  of 
the  law,  its  effect  cannot  be  varied  by  any  parol  evidence ; 7 
but  if  that  language  is  ambiguous,  it  may  be  construed  in 
the  light  of  certain  classes  of  parol  proof.  The  parties  will 
never  be  permitted  to  testify  what  they  intended  to  signify 
by  the  language  they  used,  because  if  they  were,  assignors 
might  narrow,  and  -assignees  might  widen,  the  scope  of  the 
rights  conveyed,  by  simply  making  oath  to  alleged  former 
states  of  their  own  minds.  Perjury  could  seldom  be  de- 
tected in  such  a  case  ;  and  such  a  rule  would  put  property 
at  the  mercy  of  avarice.  Nor  is  any  evidence  admissible 
which  merely  shows  that  one  of  the  parties  to  an  assign-' 
ment  made  such  declarations,  or  did  such  acts,  in  pursuance 
of  that  assignment,  as  indicate  that  he  understood  the  docu- 
ment in  a  sense  most  favorable  to  himself.  If  such  evidence 
were  admissible,  the  honest  mistake  of  an  assignor,  in  con- 

1  Railroad    Co.    9.    Trimble,    10      Rep.  629.  1888. 

Wallace,  380,  1870.  4  Hamilton  v.  Rollins,  3  Bann.  & 

2  Hartshorn  v.  Day,  19  Howard,       Ard.  160,  1877. 

222,  1856;  Mackaye  9.  Mallory,  12  5  Hay  ward  v.  Andrews,  12  Fed. 

Fed.  Rep.  328,  1882.  Rep.  786,  1882. 

3  Moore  v.  Marsh,  7  Wallace,  515,  6  Washburn    v.   Gould,   3   Story, 
1868;  May  v.  County  of  Juneau,  30  122,  1844. 

Fed.  Rep.  245,  1887;  Koalatype  Co.          1  Railroad    Co.    v.    Trimble,    10 
v.   Hoke,  30  Fed.  Rep.  444,  1887;      Wallace,  367,  1870. 
May  9.  County  of  Saginaw,  32  Fed. 


CHAP.  XI.]  TITLE.  211 

struing  his  contract,  would  often  deprive  an  assignee  of 
rights  which  he  had  honestly  bought ;  and  the  honest  mis- 
take of  an  assignee  would  often  deprive  an  assignor  of 
rights  which  he  never  had  sold.  But  parol  evidence  is  ad- 
missible to  construe  an  ambiguous  assignment,  if  that  evi- 
dence shows  the  existence  of  such  collateral  documents, 
or  surrounding  circumstances,  attending  the  execution  of 
that  assignment,  as  throw  light  upon  the  meaning  of  its 
words ; '  or  shows  that  both  parties  to  that  assignment, 
practically  construed  it,  after  its  execution,  and  in  so  doing 
construed  it  alike/  If  ambiguities  still  remain  in  an  assign- 
ment after  all  other  recognized  methods  of  solving  them 
have  been  employed,  they  are  to  be  solved  against  the 
grantor,  as  he  is  supposed  to  have  written  the  document, 
and  therefore  to  be  chargeable  with  the  obscurity.3 

§  279.  Reformation  of  an  assignment  may  be  had  by 
means  of  a  bill  in  equity  filed  for  that  purpose,  if  that  as- 
signment does  not  conform  to  the  mutual  intention  of  the 
parties  to  its  execution  ;  but  neither  party  can  secure  such 
reformation  on  proof  of  what  his  intention  was,  unless  he 
also  proves  that  the  intention  of  the  other  party  was  the 
same/  But  no  reformation  of  an  assignment  can  affect  the 
right  of  any  innocent  purchaser,  for  a  valuable  consider- 
ation, who  had  no  notice,  at  the  time  of  his  purchase,  that 
the  mutual  intention  of  the  parties  was  different  from  the 
assignment  which  passed  between  them.5 

§  280.  No  extension  of  a  patent  is  conveyed  by  an  assign- 
ment of  the  first  term  thereof."  Nor  is  any  extension,  which 

1  Read  t>.    Bowman,   2  Wallace,  1849;  May  v.  Chaff ee,  2  Dillon,  385, 

591,    1864;    Phelps   «.    Classen,    1  1871;   Falley  v.  Giles,  29  Indiana, 

Woolworth,  212,  1868;  Wetherell  «.  114,  1867. 

Zinc  Co.  6  Fisher,  50,  1872.  *  Downton  v.  Allis,  9  Fed.  Rep. 

*  Toplif  v.  Toplif,  122  U.  S.  131,  771,  1881. 

1886;  Wilcoxen  «.  Bowles,  1  Louisi-  5  Gibson  v.  Cook,  2  Blatch.  149, 

ana    An'l,    230,    1846;     Parrott    «.  1850;  Woodworth  v.  Cook,  2  Blatch 

Wikoff,  1  Louisiana  An'l,  232,  1846;  151,  1850. 

Coleman  v.   Grubb,   23   Penn.   St.  6  Wilson  v.  Rousseau,  4  Howard 

409,  1854.  646,  1846. 

3  Smith  v.  Selden,  1  Blatch.  475, 


212  TITLE.  [CHAP.  xi. 

is  not  provided  for  by  the  general  law  when  an  assignment 
is  made,  covered  by  the  word  "  renewal "  in  such  an  assign- 
ment. In  such  a  case,  that  word  is  held  to  mean  "  reissue" 
and  not  to  mean  "  extension."  '  But  if,  at  the  time  such  an 
assignment  is  made,  the  patent  statutes  do  provide  for  ex- 
tensions of  patents  of  the  class  to  which  the  assigned  patent 
belongs,  then  the  word  "  renewal "  is  a  sufficient  word  to 
convey  such  an  extension.7  An  assignment  of  an  invention, 
without  limitation  or  qualification,  will  convey,  not  only  the 
original  term,  but  also  any  Patent  Office  extension,  of  the 
patent  granted  for  that  invention.8  Whether  such  an  as- 
signment will  convey  any  Congressional  extension,  is  an 
undecided  point.  An  affirmative  decision  upon  it  will  not 
necessarily  follow  the  rule  in  Hendrie  v.  Sayles,  but  it  is 
not  improbable  that  the  Supreme  Court  will  take  the  step 
required  to  pass  from  the  one  doctrine  to  the  other,  when- 
ever the  question  arises  in  that  tribunal. 

§  281.  Recording  in  the  Patent  Office,  within  three  months 
after  its  date,  is  necessary  to  the  validity  of  any  assignment 
of  a  patent  right,  as  against  any  subsequent  purchaser  or 
mortgagee,  for  a  valuable  consideration,  without  notice.4 
This  statutory  provision  operates  to  give  constructive  notice 
to  subsequent  purchasers  and  mortgagees,  of  the  assign- 
ments which  are  duly  recorded  thereunder  ;  but  it  does  not 
apply  to  any  assignment  executed  prior  to  the  granting  of 
letters  patent,  unless  that  assignment  is  one  upon  which  a 
patent  is  to  be  issued  to  the  assignee,  and  also  identifies 
with  certainty  the  invention  conveyed  thereby.5  But  where 
an  assignment  conveys  a  patent,  and  also  conveys  all  im- 
provements that  the  assignor  may  thereafter  make  on  the 
invention  claimed  therein,  the  due  recording  of  that  assign- 
ment operates  to  give  constructive  notice  not  only  of  the 

1  Wilson  v.  Rousseau,  4  Howard,  1878. 

646,  1846.  4  Revised  Statutes,  Section  4898. 

8  Pitts  v.  Hall,  SBlatch.  201, 1854;  5  Wright  r>.  Randel,  8  Fed.  Rep. 

Goodyear  v.   Gary,  4  Blatch.  303,  599,  1881  ;   New  York  Paper  Bag 

1859;  Chase  v.   Walker,   3  Fisher,  Co.  v.  Union  Paper  Bag  Co.  32  Fed. 

122,  1866.  Rep.  788,  1887. 

3  Hendrie  v.  Sayles,  98  U.  S.  554, 


CHAP.  XI.]  TITLE.  213 

sale  of  that  patent  but  also  of  the  sale  of  those  improve- 
ments.1 Nor  does  the  provision  apply  to  any  assignment 
made  by  a  judge  or  register  in  bankruptcy  under  Title  LXL 
of  the  Revised  Statutes ;  but  such  an  assignment  though 
unrecorded  more  than  three  months  after  its  date  and  de- 
livery, will  prevail  against  a  subsequently  executed  but 
previously  recorded  assignment  of  the  bankrupt  or  his 
executor  or  administrator.2  Neither  does  the  provision  ap- 
ply to  any  assignment  which  conveyed  accrued  rights  of 
action  only.3  In  such  a  case,  the  assignee,  in  order  to  pro- 
tect his  right,  should  give  the  infringer  notice  of  the  assign- 
ment ;  so  that  if  the  infringer  afterward  pays  the  assignor, 
or  pays  some  subsequent  assignee,  for  that  right  of  action, 
he  will  do  so  at  his  peril,  and  will  not  discharge  his  liability 
to  the  first  assignee.4  Recording  an  assignment  of  a  patent, 
is  not  necessary  to  its  validity,  as  between  the  parties  to 
that  assignment ; 5  nor  as  against  an  infringer  of  the  patent ; " 
nor  as  against  an  innocent  purchaser  for  a  valuable  con- 
sideration without  notice,  who  takes  his  assignment  within 
three  months  after  the  date  of  the  prior  unrecorded  assign- 
ment ; 7  nor  as  against  any  subsequent  purchaser  who  had 
actual  notice  thereof,  when  purchasing  ; *  nor  as  against  any 
subsequent  purchaser  who  paid  no  valuable  consideration 

1  Aspinwall  Mfg.  Co.  t>.  Gill,  32  McLean,  527,  1849 ;  Black  v.  Stone, 

Fed.  Rep.  701,  1887.  33  Alabama,  327,  1858 ;  Moore  «. 

s  Prime  v.  Mfg.  Co.  16  Blatch.  Bare,  11  Iowa,  198,  1860 ;  Turnbull 

456,  1879.  «•  PIOW  Co-  6  Bissell,  229,  18.74. 

3  Gear  v.  Fitch,  3  Bann.  &  Ard.  6  Brooks  9.  Byam,  2  Story,  525, 
573,  1878.  1843  J   Pitts  *•  Whitman,  2   Story, 

4  Woodbridge  t>.  Perkins,  3  Day  609,  1843;  Boyd  t>.  M'Alpin,  3  Mc- 
(Connecticut),    364,   1809 ;  Vanbus-  Lean,  427,  1844 ;   Case  v.  Redfield, 
kirk  v.  Hartford  Fire  Insurance  Co.  4  McLean,  526,  1849  ;  McKernan  t>. 
14  Connecticut,  144, 1841;  Campbell  Kite,  6  Indiana,  428,  1855  ;    Sone  9. 
v.  Day,  16  Vermont,  558, 1844;  Clod-  Palmer,  28  Missouri,  539,  1859. 
felter  9.  Cox.  1  Sneed  (Tenn.),  330,  '  Gibson  «.  Cook,  2  Blatch.  144, 
1853;    Loomis  9.   Loomis,  26  Ver-  1850 

mont,  198, 1854;  Murdoch  v.  Finney,  8  Peck  «.  Bacon,  18  Connecticut, 

21  Missouri,  138,  1855;  McWilliams  377,    1847  ;    Continental    Windmill 

v.  Webb.  32  Iowa,  577,  1871.  Co.    9.    Empire    Windmill    Co.    8 

5  Holden  9.  Curtis,  2  New  Hamp-  Blatch.  29.1,  1871  ;  Ashcroft  9.  Wai- 
shire,  61,  1819 ;  Case  9.  Redfield,  4  worth,  1  Holmes,  152,  1872. 


214  TITLE.  [CHAP.  xi. 

for  the  assignment  which  he  took.1  A  merely  good  con- 
sideration will,  therefore,  not  support  an  assignment  as 
against  any  prior  unrecorded  assignment  of  the  same  pat- 
ent given  for  a  valuable  consideration. 

The  notice  which  wTill  protect  a  prior  unrecorded  assign- 
ment, against  a  subsequent  assignment  for  a  valuable  con- 
sideration, may  be  actual,  or  it  may  be  constructive  only. 
Such  constructive  notice  may  be  based  on  the  fact  that  the 
subsequent  assignee  was  informed,  at  the  time  of  his  pur- 
chase, that  the  prior  assignee  was  making,  using,  or  selling 
specimens  of  the  invention  covered  by  the  patent  involved. 
Such  making,  using,  or  selling  is  such  a  possession  of  the 
invention,  as  charges  all  purchasers  who  are  cognizant 
thereof,  with  notice  of  whatever  title  the  maker,  user,  or 
seller  may  possess.2  Whether  such  constructive  notice  may 
also  be  based  on  the  fact  that  the  subsequent  purchaser 
was  a  corporation  in  which  the  assignor  was  a  director,  is  a 
question  upon  which  the  precedents  are  now  opposing.3 
Where  title  has  once  vested  in  a  subsequent  purchaser,  for 
a  valuable  consideration,  without  notice  of  a  prior  unre- 
corded assignment  more  than  three  months  old ;  that  title 
becomes  absolute,  and  may  be  purchased  by  persons  who 
had  actual  knowledge  of  the  prior  assignment.4  If  this  rule 
were  otherwise,  titles  thus  derived  might  become  valueless 
for  want  of  qualified  purchasers.6 

The  foregoing  parts  of  this  section  contemplate  cases 
where  the  things  covered  by  several  assignments  of  the 
same  assignors,  are  unquestionably  identical ;  and  where 
there  is  no  ground  for  controversy  relevant  to  the  respective 
dates  of  the  conflicting  transactions.  Where  either  or  both 


1  Saxton    ®.    Aultman,    15    Ohio  v.  Davis  Wagon  Co.  20  Fed.  Rep. 

State,  471,  1864.  700,  1884. 

*  Prime  «.   Mfg.   Co.  16  Blatch.  *  Wright  v.  Randel,  8  Fed.  Rep. 

455,  1879.  599,  1881. 

3  Continental    Windmill    Co.    v.  B  Varick  v.  Briggs,  6  Paige  (N.  Y.), 

Empire  Windmill  Co.  8  Blatch.  295,  329,  1837 ;  Story's  Equity  Jurispru- 

1871 ;    Cutter  Co.    «.    Sheldon,   10  dence,  Section  1503a. 
Blatch.  1,  1872 ;  Davis  Wheel  Co. 


CHAP.  XI.]  TITLE.  215 

of  those  circumstances  are  otherwise,  other  points  of  law 
will  also  arise.  Where,  for  example,  the  subsequent  assign- 
ment purported  to  convey  no  more  than  the  right,  title,  and 
interest  of  the  assignor,  in  the  specified  patent,  that  assign- 
ment can  never  prevail  against  any  prior  unrecorded  as- 
signment which  left  any  interest  in  the  assignor  ; '  if  indeed 
it  can  prevail  against  one  which  left  no  such  interest. " 

The  date  of  an  assignment  is  the  day  of  its  delivery,  and 
not  the  date  which  appears  upon  its  face,  if  the  latter  differs 
from  the  former ; 3  and  the  three  months  within  which,  after 
that  date,  an  assignment  is  required  to  be  recorded,  are 
lunar,  and  not  calendar  months.4 

§  282.  Warranty  of  title  is  implied  in  every  assignment  of 
a  patent  right  unless  that  assignment  purports  to  convey 
merely  the  right  of  the  assignor ;  or  unless  it  is  otherwise 
limited  to  narrower  ground  than  the  entire  patent  right 
which  it  describes.  Every  such  assignment  will  therefore 
transfer  whatever  title  the  assignor  may  subsequently  ac- 
quire by  purchase  or  otherwise.5  But  an  assignment  of  the 
right,  title,  and  interest  of  the  assignor  without  anything 
more,  will  not  operate  to  convey  any  title  which  is  subse- 
quently acquired  by  him.8 

§  283.  No  warranty  of  validity  is  implied  in  any  assign- 
ment of  a  patent  right.  If  the  assignor  knows  the  patent 
to  be  invalid,  at  the  time  he  makes  the  assignment,  he  is 
guilty  of  fraud,  and  the  assignee  may  have  relief  against 
him,  on  that  ground ;  but  if  both  parties  are  equally  inno- 
cent of  knowledge  of  invalidity,  the  loss  consequent  on  any 
invalidity  afterward  brought  to  light,  must  fall  upon  the 
then  owner  of  the  patent.7 

1  Brown  ».  Jackson,  3  Wheaton,          4  Section  125  of  this  book. 

449,   1818  ;   Ashcroft  t>.  Walwcrth,  5  Faulks  v.  Kamp,  17  Blatch.  433, 

1  Holmes,  152,  1872;   Turnbull  «.  1880. 

Plow  Co.  6  Bissell,  230,  1874.  6  Perry  v.  Corning,  7  Blatch.  195, 

2  Oliver  v.  Piatt,  3  Howard,  363,  1870. 

1845  ;  May  «.  Le  Claire,  11  Wallace,  7  Hiatt  v.  Twomey,  1  Devereux  & 

232,  1870.  Battle's  Equity  Cases  (N.  C1.),  315, 

3  Dyer  v.  Rich,  1  Metcalf  (Mass.),  1836  ;   Cansler  ®.    Eaton,   2  Jones' 
180,  1840.  Equity  Cases  (N.  C.),  499,  1856. 


216  TITLE.  [CHAP.  XL 

Some  State  courts  have  held,  that  when  sued  by  an  as- 
signor for  the  purchase  price  of  a  patent,  any  assignee  may 
defend  on  .any  ground  of  invalidity  which  he  can  prove  to 
exist.  This  view  is  based  on  the  theory  that  in  such  a  case 
there  is  a  failure  of  consideration.  This  theory  is  not  cor- 
rect, because  an  assignor  may  lose,  and  an  assignee  may 
gain  as  much  on  account  of  the  assignment  of  an  invalid 
patent  as  on  account  of  a  valid  one.  An  assignment  of  an 
invalid  patent  is  a  sufficient  consideration  to  support  a 
promissory  note,  in  any  case  where  there  is  neither  war- 
ranty nor  fraud.1  To  allow  an  assignee,  who  has  made 
profit  from  the  patent  assigned,  to  defend  against  a  suit  for 
the  promised  price,  on  the  ground  of  some  defect  he  has 
been  able  to  discover  in  the  patent,  would  be  very  unjust.2 
Such  a  rule  might  enable  an  assignee  to  reap  enormous 
gains  from  practically  exclusive  rights,  and  then  to  avert 
payment  for  those  rights,  on  some  far-fetched  ground  of 
invalidity,  which  never  for  one  moment  had  disturbed  his 
exclusive  possession  of  the  patented  privilege.  Even  where 
an  assignee  is  not  shown  to  have  derived  any  benefit  from 
the  assignment  of  a  particular  patent,  he  ought  not  to  be 
permitted  to  defend  against  a  suit  for  the  price  he  promised 
to  pay  therefor ;  because  that  assignment  operated,  at  least 
to  prevent  the  assignor  from  making,  using,  or  selling  speci- 
mens of  the  patented  thing.  It  is  perfectly  well  settled 
that  loss  or  disadvantage  to  the  promisee,  is  a  sufficient  con- 
sideration to  support  a  contract,  even  where  that  contract 
resulted  in  no  benefit  to  the  promisor.1 

§  284.  Express  warranties  of  validity  may  of  course  be  in- 
corporated in  assignments  of  patents ;  and,  where  so  in- 
corporated, they  will  subject  assignors  to  actions  for 
damages,  if  the  patents  assigned  are  found  to  be  in  fact  in- 
valid.4 Parol  warranties  of  validity,  when  they  accompany 


1  Thomas  v.  Quintard,  5  Duer  (N.  3  Parsons  on  Contracts,  Book  2, 

Y.),  80,  1855.  Ch.  1,  Sec.  2. 

2Milligan  v.  Mfg.  Co.  21  Fed.  *  Wright  v.  Wilson,  11  Richard- 
Rep.  570,  1884.  son  (S.  C.  Law  Reports),  151,  1856. 


CHAP.  XI.]  TITLE.  217 

written  assignments  of  patents,  are  inadmissible  as  foun- 
dations for  actions  for  damages  based  on  alleged  invalidity 
of  those  patents  ; l  but  such  parol  statements  may  be  ad- 
missible as  aiding  to  prove  fraud,  in  a  case  where  other 
evidence  shows  that  the  assignor  knew  the  patent  to  be  in- 
valid, when  he  made  the  assignment.2  In  such  a  case,  how- 
ever, the  assignee's  right  of  action  rests  upon  the  fraud  and 
not  upon  the  parol  warranty.3  It  follows,  therefore,  that 
the  parol  warranties  of  validity  w.hich  sometimes  accom- 
pany assignments  of  patents,  have  little  legal  value. 

§  285.  Equitable  titles  to  patent  rights  may  arise  in  a 
number  of  different  ways.  Such  a  title  accrues  to  an  as- 
signee when  a  patent  is  granted  to  an  inventor,4  or  to  a 
subsequent  assignee  chargeable  with  notice,5  for  an  invention 
made  or  completed  or  patented,  after  the  execution  of  an 
assignment  adapted  to  convey  it ;  and  a  document  which 
conveys  a  patent,  and  which  also  purports  to  convey  all 
improvements  on  the  invention  covered  thereby  which  may 
thereafter  be  made  by  the  assignor,  is  an  example  of  such 
an  assignment.8  Such  a  title  accrues  to  an  inventor  when  a 
patent  is  granted  to  his  assignee,  in  pursuance  of  an  assign- 
ment, which  was  accompanied  by  a  contract  providing  that 
the  assignee  should  pay  to  the  inventor  all  or  some  portion 
of  the  proceeds  of  the  patent/  Such  a  title  accrues  to  an 
assignee  of  a  term  for  years,  in  a  patent  right,  if  that  term 
is  limited  to  expire  before  the  expiration  of  the  existing 
term  of  the  patent.8  Such  a  title  accrues  to  a  consolidated 
corporation  in  patents  owned  by  its  constituent  corpo- 


1  Van  Ostrand  v.  Reed,  1  Wendell,  tinental    Windmill  Co.   v.   Empire 

(N.  Y.)  432, 1828;  Jolliffe  t>.  Collins,  Windmill  Co.  8  Blatch.  295,  1871. 
21  Missouri,  341,  1855.  5  PontiacBootCo.  v.  Merino  Shoe 

4  McClure  t>.  Jeffrey,  8  Indiana,  Co.  31  Fed.  Rep.  286,  1887. 
83,  1856.  6  Aspinwall  Mfg.  Co.  «.   Gill,  32 

3  Rose  v.  Hurley,  39  Indiana,  78,  Fed.  Rep.  699,  1887. 

1872.  '  Sayles  v.  Dubuque  &  Sioux  City 

4  Littlefield  «.  Perry,  21  Wallace,  Railroad  Co.  5  Dillon,  563,  1878. 
226,  1874;    Nesmith  v.   Calvert,   1          8  Cook  t>.  Bidwell,   8  Fed.  Rep, 
Woodbury  &  Minot,  34,  1845;  Con-  452,  1881. 


218  TITLE.  [CHAP.  xi. 

rations.1  And  such  a  title  will  doubtless  arise  out  of  any 
contract  which  purports  to  give  a  person  a  beneficial  in- 
terest in  a  patent  right ;  but  which  does  not  amount  to  an 
assignment  or  grant  of  legal  title,  nor  to  a  license  to  make, 
to  use,  or  to  sell  the  invention.  So  also,  any  facts  which 
would  create  a  constructive  or  a  resulting  trust,  if  they  re- 
lated to  other  kinds  of  intangible  personal  property,  will 
doubtless  have  the  same  effect  upon  property  in  patents, 
when  they  relate  thereto. 

§  286.  In  whatever  way  an  equitable  title  to  a  patent 
right  may  have  arisen,  it  will  be  translated  into  a  legal  title, 
in  a  proper  case2  by  means  of  a  bill  for  specific  performance 
of  contract  or  other  action  in  equity  ; 3  and  where  no  affir- 
mative relief  is  sought  by  the  holder  of  an  equitable  title  to 
a  patent,  such  a  title  will  be  upheld  by  a  court  of  equity, 
as  against  all  claims  made  under  the  naked  legal  title.  But 
if  the  holder  of  the  legal  title  assigns  the  patent  to  a  pur- 
chaser for  a  valuable  consideration,  without  notice  of  the 
equitable  title  ;  such  a  purchaser  will  take  the  entire  own- 
ership of  the  patent,  freed  from  the  prior  equitable  encum- 
brance.4 One  district  judge  has  decided  this  point  the 
other  way,  holding  that  the  maxim  caveat  emptor  applies  to 
such  a  case.5  But  that  decision  was  rendered  before  that 
in  Hendrie  v.  Sayles ;  and  was  made  in  evident  forgetful- 
ness  of  the  really  applicable  maxim  that,  "  between  equal 
equities  the  law  will  prevail ;"  and  of  the  well  established 
doctrine,  that,  if  a  purchaser  for  a  valuable  consideration 
without  notice  of  a  prior  equitable  right,  obtains  a  legal 
title  at  the  time  of  his  purchase,  he  will  be  entitled  to 
priority  in  equity,  as  well  as  in  law.6  The  maxim  of  caveat 


1  Edison   Electric    Light    Co.   v.  Machine  Co.  32  Fed.  Rep.  783,  1887. 

New  Haven  Electric  Co.   35  Fed.  4  Hendrie  v.  Sayles,  98  U.  8.  549, 

Rep.  236,  1888.  1878. 

*  Kennedy  «.  Hazleton,  128  U.  S.  6  Consolidated  Fruit  Jar  Co.  v. 

667,  1888.  Whitney,  2  Bann.  &  Ard.  385,  1876. 

3  Hapgood  v.  Rosenstock,  23  Fed.  6  Bispham's  Principles  of  Equity, 

Rep.  87, 1885;  New  York  Paper  Bag  Section  40. 
Machine   Co.  v.  Union  Paper  Bag 


CHAP.  XI.]  TITLE.  219 

emptor  applies  where  a  seller  has  no  title  whatever.1  "When 
a  seller  has  the  legal  title,  but  not  the  equitable,  then  the 
other  maxim  governs  the  rights  of  assignees. 

§  287.  A  grant,  from  one  person  to  another,  of  a  patent 
right  is  a  conveyance  in  writing  of  the  entire  right,  or  of  an 
undivided  interest  therein,  within,  and  throughout  a  certain 
specified  portion  of  the  territory  of  the  United  States.2  The 
subject  matter  of  a  patent  right  is  not  divisible  in  an}- 
other  category  than  a  territorial  one  ; 3  and  therefore  grants 
cannot  be  made  to  convey  one  of  several  inventions  covered 
by  a  claim  ;  nor  to  convey  an  exclusive  right  to  make,  use 
and  sell  a  patented  invention  for  one  of  several  purposes  to 
which  it  is  applicable.  The  rules  which  relate  to  the  form, 
authentication,  construction,  revocation,  reformation  and 
effect  of  assignments,  refer  with  equal  force  to  grants ;  ex- 
cept as  otherwise  stated  or  implied  in  this  section,  and  ex- 
cept as  the  explained  nature  of  a  grant  clearly  indicates 
otherwise.  In  addition  to  those  t  rules,  there  are  several 
which  refer  to  grants  and  not  to  assignments  ;  and  to  the 
latter,  it  is  now  in  order  to  attend. 

A  grant  is  not  void  for  ambiguity  where  it  purports  to 
convey  all  of  the  territory  of  the  United  States  except  a 
number  of  counties  theretofore  conveyed  to  others,  but  not 
specified  in  the  grant ;  because  the  reservation  is  such  an 
one  as  is  capable  of  being  made  certain  by  competent  evi- 
dence.4 It  is  not  inconsistent  with  the  character  of  a  docu- 
ment as  a  grant,  that  it  contains  a  clause  of  forfeiture  in 
case  of  non-payment  of  royalties,  or  a  clause  providing  that 
the  grantor  shall  prosecute  and  defend  suits  relating  to  the 
exclusive  right  granted.5  Nor  is  it  inconsistent  with  a  grant, 


1  Abbett  v.  Zusi,  5  Bann.  &  Ard.  Blatch.  21,  1846;  Washing  Machine 

38,  1879.  Co.  v.  Earle,  3  Wallace,   Jr.  320, 

9  Gayler  v.  Wilder,  10  Howard,  1861. 

494,  1850;  Moore  v.  Marsh,  7  Wai-  4  Washburn  &  Moen  Mfg.  Co.  v. 

lace,  521,  1868;  Littlefield  v.  Perry,  Haish,  4  Fed.  Rep.  908,  1880. 

21  Wallace,  219,  1874.  5  Littlefield  v.  Perry,  21  Wallace, 

3  Goodyear  v.  Railroad  Co.  1  Fish-  220,  1874. 
er,   627,   1853;    Suydam  v.  Day,  2 


220  TITLE.  [CHAP.  xi. 

that  the  document  limits  the  exercise  of  the  exclusive  right, 
to  the  making,  using  and  selling  of  a  particular  number  of 
specimens  of  the  patented  invention  involved.1  But  no  in- 
strument can  be  a  grant  which  reserves  a  right  to  the  gran- 
tor, to  sell  specimens  of  the  patented  thing,  within  the  terri- 
tory covered  thereby ;  though  it  reserves  him  no  right  to 
make  or  to  use  any  such  specimen  within  that  territory.3 

§  288.  A  grant  of  an  exclusive  right  to  make,  use,  and  sell 
a  particular  patented  invention  within  a  particular  part  of 
the  United  States,  confers  the  right  to  use,  anywhere  within 
the  United  States,  those  specimens  of  that  invention  which 
are  made  and  sold  under  the  grant,  and  within  the  territory 
covered  thereby.3  This  point  was  established  in  a  case 
where  the  patented  article  was  capable  of  being  used  but 
once ;  but  in  another  case  which  supports  it,  the  rule  was 
applied,  though  the  thing  covered  by  the  patent  was  ca- 
pable of  repeated  uses.  It  was  a  remark  of  Sir  Francis  Ba- 
con, that :  "  It  is  the  vice. of  subtle  minds  to  attach  too  much 
importance  to  slight  distinctions."  Such  a  mind  may  pos- 
sibly hold  that  Judge  SAWYER  was  not  justified  in  disregard- 
ing the  distinction  just  mentioned.  But  Judge  SAWYER 
took  still  a  further  step  in  the  ease  last  cited.  He  refused 
to  enjoin  the  defendant  from  selling,  west  of  the  Rocky 
Mountains,  those  specimens  of  the  patented  invention  which 
were  lawfully  made  and  sold  east  of  that  landmark  ;  though 
the  complainant  was  the  sole  grantee  of  all  the  territory 
which  he  sought  to  protect  from  intrusion.  On  the  other 
hand,  Judge  McKENNAN,4  and  Judge  WHEELER/  have  held 
that  a  grant  of  an  exclusive  right  to  make,  use,  and  sell  a 
particular  patented  invention  within  a  particular  part  of  the 
United  States,  confers  no  right  to  sell,  in  any  other  part 

1  Wilson  v.  Rousseau,  4  Howard,       1873;  McKay  «.  "Wooster,  2  Sawyer, 
646,  1846;   Washburn  v.   Gould,  3      373,  1873. 

Story,  122,  1844;  Ritter  v.  Serrell,  2  4  Hatch  v.  Adams,  22  Fed.  Rep. 

Blatch.  379, 1852.  434,  1884. 

2  Pitts  v.   Jameson,  15  Barbour  6  Hatch  t>.  Hall,  22  Fed.  Rep.  438, 
(N.  Y.  Supreme  Court),  315,  1853.  1884;  Hatch  •».  Hall,  30  Fed.  Rep. 

3  Adams  v.  Burke,  17  Wallace,  453,  613,  1887. 


CHAP.  XI.]  TITLE.  221 

of  the  United  States,  any  specimen  of  that  invention  which 
was  made  and  sold  under  the  grant,  and  within  the  territory 
covered  thereby. 

§  289.  A  creditor's  bill  may  operate  to  transfer  a  complete 
title,  or  an  equitable  title,  to  a  patent  right,  whenever  a 
judgment  is  obtained  against  its  owner,  and  an  execution 
issued  on  that  judgment,  is  returned  nulla  bona;  and  the 
court  in  which  the  creditor's  bill  is  filed  may  appoint  a 
trustee  to  execute  a  proper  assignment.1  But  a  suit,  in- 
stituted by  the  filing  of  such  a  bill,  is  not  a  patent  suit  in 
such  a  sense  as  to  confer  jurisdiction  on  a  Federal  court.9 
"Where  jurisdiction  is  not  conferred  upon  those  courts  by 
variant  citizenship,  or  other  cause  known  to  the  law,  it  will 
be  necessary  to  proceed  in  the  courts  of  the  States.  In 
such  of  the  States  as  have  preserved  equity  pleadings  and 
proceedings,  a  creditor's  bill  is  the  proper  document  to  file 
in  such  a  court,  when  pursuing  such  relief ;  but  in  the  States 
which  have  adopted  codes  of  civil  procedure,  in  place  of  the 
common  law  and  equity  plans  of  judicature,  the  end  in  view 
may  be  reached  by  what  are  called  proceedings  supplement- 
ary to  executions.3 

§  290.  Adjudication  of  bankruptcy  and  appointment  of  an 
assignee,  operated,  under  the  bankrupt  law  of  1867,  to  vest 
in  such  assignee,  all  patent  rights  of  the  bankrupt  *  and  all 
rights  of  action  based  thereon,  except  such  as  were  held  in 
trust  by  him,  and  except  such  as  were  exempted  from  at- 
tachment, or  seizure,  or  levy  on  execution  by  virtue  of  the 
laws  of  the  United  States,  or  by  virtue  of  the  laws  of  the 
State  in  which  the  bankrupt  had  his  domicile  at  the  time  of 
the  commencement  of  the  bankruptcy  proceedings.5  Though 
this  bankruptcy  law  was  repealed  in  1878,  many  titles,  to 
patent  rights  now  in  force,  were  transferred  by  its  opera- 


1  Ager  v.  Murray,  105  U.  S.  126,  California,  522,  1881. 

1881.  4  Kittle  v.  Hall,  29  Fed.  Rep.  510, 
s  Ryan  v.  Lee,  10  Fed.  Rep.  917,  1887. 

1882.  5  Revised  Statutes,  Sections  5046, 
3  Pacific    Bank   v.   Robinson,   57  5053,  5045. 


222  TITLE.  [CHAP.  xi. 

tion  ;  and  it  is  therefore  still  a  law  of  practical  importance. 
Whenever  new  bankruptcy  statutes  are  hereafter  enacted,  it 
is  probable  that  similar  provisions  will  be  inserted  also  in 
them.  Corresponding  proceedings  in  insolvency  under 
State  laws,  do  not  have  the  operation  of  bankruptcy  pro- 
ceedings in  this  particular.  They  do  not  confer  upon  the 
assignee  in  insolvency,  any  title  to  the  patent  rights  of  the 
insolvent.1  But  it  is  probable,  that  courts  which  have  juris- 
diction of  such  proceedings,  may  compel  the  insolvent  to 
execute  such  an  assignment  to  the  assignee  in  insolvency 
as  will  convey  the  same  rights  to  the  latter,  as  those  which, 
without  such  a  document,  were  conveyed  to  an  assignee  in 
bankruptcy  under  the  bankrupt  law  of  1867. a 

§  291.  Death  of  an  inventor,  before  the  grant  of  a  patent 
for  his  invention,  causes  a  transfer  of  his  inchoate  title,  to 
his  executor  or  administrator,  in  trust  for  the  heirs  at  law 
of  the  deceased  in  case  he  dies  intestate,  or  in  trust  for  his 
devisees  in  case  he  leaves  a  will  disposing  of  the  invention.' 
Such  an  inchoate  title  has  several  of  the  same  qualities,  in 
the  hands  of  the  executor  or  administrator,  that  it  had  in 
the  hands  of  the  deceased.  If  it  was  an  unassigned  inchoate 
title  in  the  hands  of  the  inventor,  it  is  likewise  so  in  the 
hands  of  his  legal  representative.  If  the  deceased  had 
parted  with  the  equitable  title,  and  had,  at  his  death,  only 
the  inchoate  legal  title,  the  equitable  title  will  be  unaffected 
by  the  death  of  the  inventor,  and  will  remain  the  property 
of  its  purchaser.4  So  also,  if  the  inventor  had  parted,  prior 
to  his  death,  with  the  inchoate  legal  title,  and  retained  the 
equitable  title,  then  the  latter,  and  not  the  former,  will  de- 
volve upon  his  executor  or  administrator.  Death  of  the 
owner  of  any  legal  or  equitable  title  to  a  patent  right  al- 
ready in  existence,  causes  a  transfer  of  that  title  to  his  exec- 
utor or  administrator,  in  like  manner  as  it  causes  the  trans- 


1  Ashcroft  v.  Walworth,  1  Holmes,  8  Revised  Statutes,  Section  4896. 

154,  1872.  4  Northwestern  Extinguisher  Co. 

s  Ager  v.  Murray,  105  U.  S.  131,  v.  Philadelphia  Extinguisher  Co.  1 

1881.  Bann.  &  Ard.  177,  1874. 


CHAP.  XI.]  TITLE.  223 

fer  of  any  other  intangible  personal  property  of  the  de- 
ceased.1 Such  a  legal  representative  may  convey  the  title 
by  assignment  or  by  grant,  by  means  of  any  suitable  instru- 
ment in  writing,  and  in  pursuance  of  such  general  or  special 
authority  from  the  probate  court  as  is  prescribed,  in  that 
behalf,  by  the  laws  of  the  particular  State  whose  court  that 
tribunal  is."  Where  there  are  several  joint  executors  or 
administrators,  the  assignment  or  grant  of  one  of  them,  is 
legally  the  assignment  or  grant  of  them  all ; 3  and  if  an  ad- 
ministrator denominates  himself  an  executor,  or  if  an  exec- 
utor calls  himself  an  administrator,  in  such  a  document, 
that  document  will  be  none  the  less  efficacious  to  convey 
the  title  which  he  holds  in  his  true  capacity.* 

§  292.  Tenancy  in  common,  in  a  patent  right,  will  arise 
whenever  the  sole  owner  of  such  a  right,  in  all  or  in  part  of 
the  territory  of  the  United  States,  conveys  to  another  an 
undivided  interest  in  the  whole  or  in  part  of  the  right  which 
he  owns.  Mutual  ownership  of  some  sort  arises  when  a 
plurality  of  persons  are  joint  inventors  of  a  process  or  thing, 
for  which  they  obtain  a  joint  patent ;  and  also  when  a  plu- 
rality of  persons  obtain,  by  one  assignment  or  grant,  the 
undivided  ownership  of  a  patent,  or  the  undivided  owner- 
ship of  a  patent  right  in  a  part  of  the  territory  of  the  United 
States.  Whether  such  mutual  ownership  constitutes  ten- 
ancy in  common,  or  constitutes  joint-tenancy  is  a  question 
upon  which  no  positive  answer  can  at  present  be  given. 
The  text  writer  can  do  no  more  than  to  state  the  considera- 
tions upon  which  each  of  the  two  possible  answers,  if  given, 
must  be  based,  and  to  state  which  of  those  sets  of  considera- 
tions appear  to  be  the  more  convincing. 

In  favor  of  the  hypothesis  of  joint-tenancy,  it  may  be  said 
that  joint-tenancy  is  a  doctrine  of  the  common  law  which  is  as 

1  Brooks  «.   Jenkins,  3  McLean,  *  Brooks  v.   Jenkins,  3  McLean, 

441,  1844;  Hodge  v.  North  Missouri  441,  1844. 

Railroad  Co.   1   Dillon,  104,  1870;  3  Wintermute   «.    Redington,    1 

Shaw  Valve  Co.  t».  New  Bedford,  19  Fisher,  239,  1856. 

Fed.  Rep.  753, 1884;  Bradley  v.  Dull,  *  Newell  «.  West,  13  Blatch.  114, 

19  Fed.  Rep.  913,  1884.  1875. 


224  TITLE.  [CHAP.  xi. 

applicable  to  personal  property  as  to  real  estate  ; '  and  that 
such  mutual  ownership  of  patent  rights,  as  that  now  under 
inspection,  is  characterized  by  all  of  the  four  unities  which 
constitute  joint-tenancy ;  the  unity  of  interest ;  the  unity  of 
title ;  the  unity  of  time  ;  and  the  unity  of  possession.2  In 
answer  to  this  it  may  be  said  that  the  doctrine  of  survivorship 
is  the  distinguishing  characteristic  of  joint-tenancy  ;  and  that 
the  reasons  which  gave  rise  to  that  description  of  estate -in 
England,  never  existed  in  the  United  States  ;  and  that  those 
reasons  were  founded  on  the  feudal  idea  that  the  services 
due  to  the  superior  lord,  should  be  kept  entire  ;  and  that 
the  doctrine  of  survivorship  was  invented  to  secure  that 
feudal  end ;  and  that  it  has  no  foundation  on  any  principle 
of  natural  justice,  or  on  any  point  of  public  policy  relevant 
to  American  patent  rights  ;  and  that,  therefore,  joint-ten- 
ancy and  its  incident,  survivorship,  are  not  such  doctrines 
of  the  common  law  as  are  entitled  to  be  incorporated  into 
our  American  patent  system.  To  this  argument  against 
joint-tenancy,  it  may  be  replied  that  it  has  as  reasonable  an 
application  to  American  patent  rights,  as  it  has  to  American 
real  estate ;  and  that  the  Supreme  Court  of  the  United 
States  has  applied  it  to  the  latter  sort  of  property.8  To  this 
it  may  be  rejoined  that  though  the  question  was  involved, 
it  was  not  argued,  in  the  case  last  cited  ;  and  that  the  Su- 
preme Courts  of  several  of  the  States  have  decided  that 
joint-tenancy  is  not  a  part  of  American  common  law."  And 
it  may  be  further  rejoined  that  even  if  applicable  to  Ameri- 
can real  estate,  it  is  not  applicable  to  American  patent 
rights,  because,  if  it  were,  it  would  often  operate  to  defeat 
the  reward  to  inventors  which  it  is  a  purpose  of  American 
patent  law  to  secure ;  and  because  the  same  reasons  which 
in  England  excluded  the  doctrines  of  joint-tenancy  from 
personal  property  used  in  agriculture  or  in  commerce,* 

1  Blackstone,  Book  2,  Ch.  25,  last  necticut),  48, 1769;  Sergeant  v.  Stein- 
paragraph,  berger,  2  Ohio,  306,  1826;  Harris  v. 
*  Blackstone,  Book  2,  Ch.  12.  Clark,  10  Ohio,  5,  1840. 

3  Mayburry  r.   Brien,   15  Peters,  6  Blackstone,    Book    2,    Ch.    2.), 
37,  1841.  last  paragraph. 

4  Phelps  «.  Jepson,  1  Root  (Con- 


CHAP.  XI.]  TITLE.  225 

should  in  America  exclude  those  doctrines  from  personal 
property  created  by  invention  and  used  in  manufactures. 
And  it  may  be  further  rejoined  that,  even  if,  in  the  absence 
of  contrary  legislation,  the  doctrines  of  joint-tenancy  would 
apply  to  American  patent  rights,  yet  those  doctrines  have 
been  substantially  abrogated  throughout  most  of  the  United 
States,  by  means  of  those  State  statutes  which  have  re- 
pealed or  emasculated  those  doctrines  within  the  several 
States,  and  by  virtue  of  Section  721  of  the  Revised  Stat- 
utes, which  has  adopted  those  State  statutes.  To  the 
last  rejoinder  it  may  be  surrejoined  that  Section  721  of 
the  Revised  Statutes  does  not  adopt  the  State  statutes  on 
this  subject ;  because  that  section  is  identical  with  Sec- 
tion 34  of  the  Judiciary  Act  of  1789,  and  because  the 
latter  provision  has  been  held  by  the  Supreme  Court, 
to  apply  only  to  cases  arising  out  of  the  laws  of  the 
States.1  To  this  surrejoinder,  there  may  be  a  rebutter  that 
this  part  of  the  decision  in  the  United  States  v.  Reid,  has 
apparently  been  overruled  in  later  Supreme  Court  cases.* 
To  the  mind  of  the  text  writer  it  appears  that  those  of  the 
foregoing  arguments  which  deny  joint-tenancy  in  patent 
rights,  are  on  the  whole  more  convincing  than  those  which 
affirm  it.  All  mutual  ownership  of  such  rights,  will  there- 
fore be  treated  in  the  following  pages,  as  though  it  were, 
undeniably,  tenancy  in  common. 

Inasmuch,  however,  as  the  question  has  never  been  de- 
cided by  the  Supreme  Court,  it  would  be  prudent  to  avoid, 
as  far  as  possible,  the  circumstances  which  created  a  joint- 
tenancy  at  English  common  law  ;  for  if  joint- tenancy  should 
be  held  to  exist  in  any  patent  right,  its  doctrine  of  survivor- 
ship would  deprive  the  heirs  or  devisees  of  a  dying  joint- 
tenant,  of  their  just  inheritance,  and  would  confer  that  in- 
heritance upon  the  joint-tenant  who  survived.3 


1  United  States  v.  Reid,  12  How-  1  Black.  431, 1861;  Wright  r>.  Bales, 

ard,  363,  1851.  2  Black.  535,  1862. 

*  Vance  v.  Campbell,  1  Black.  3  Blackstone,  Book  2,  Ch.  25,  last 

427,  1861;  Haussknecht  v.  Claypool,  paragraph. 


226  TITLE.  [CHAP.  xi. 

§  293.  The  circumstances,  which,  unless  avoided,  may  be 
held  to  create  a  joint-tenancy  in  a  patent,  can,  where  joint 
inventors  become  joint  patentees,  be  avoided  by  means  of 
a  joint  assignment  of  the  patent  to  a  third  person,  and  a 
separate  reassignment  to  the  patentees,  of  their  respective 
undivided  interests.  Such  an  operation  will  turn  any  joint- 
tenancy  into  a  tenancy  in  common,  because  it  destroys  the 
unity  of  title,  and  if  the  separate  reassignments  are  executed 
and  delivered  on  different  days,  it  also  destroys  the  unity 
of  time.  Where  a  sole  inventor  sells  an  undivided  interest 
in  his  invention  or  his  patent,  the  objectionable  circum- 
stances can  be  avoided  by  simply  assigning  that  undivided 
interest  to  the  purchaser ;  instead  of  doing  the  common, 
but  unscientific,  thing  of  assigning  the  whole  invention,  or 
the  whole  patent,  to  himself  and  to  that  purchaser  jointly. 
And  in  a  case  where  a  sole  patentee  assigns  his  patent,  or 
grants  a  territorial  right  therein,  to  a  plurality  of  purchasers, 
those  circumstances  can  be  avoided  by  simply  executing  and 
delivering  a  separate  paper  to  each  purchaser  for  his  un- 
divided share  ;  instead  of  making  one  document  convey  the 
whole  right  to  all  the  purchasers  together.  Indeed  any  de- 
vice which  will  destroy  either  of  the  four  unities  of  a  joint- 
tenancy,  will  destroy  that  tenancy,  and  at  the  same  instant 
will  destroy  the  right  of  survivorship.  If  the  unity  of  pos- 
session is  destroyed,  the  ensuing  estate  of  each  owner  is  an 
estate  in  severalty  ;  but  if  that  unity  is  preserved,  while 
either  or  all  of  the  others  are  destroyed,  the  joint-tenancy 
is  converted  into  a  tenancy  in  common.1 

§  294.  One  tenant  in  common  of  a  patent  right  may  ex- 
ercise that  right  to  any  extent  he  pleases  without  the  con- 
sent of  any  co-tenant.  He  may  make,  use,  and  sell,  specimens 
of  the  patented  invention  to  any  extent,  and  may  license 
others  to  do  so,  and  neither  he  nor  his  licensees  can  be 
enjoined  from  a  continuance  in  so  doing.2  Nor  can  any 
recovery  of  profits  or  damages  be  had  against  any  such 

1  Blackstone,  Book  2,  Ch.  12.  1855;  Aspinwall  Mfg.   Co.  v.  Gill, 

2  Cluin  «.  Brewer,  2  Curtis,  523,      32  Fed.  Rep.  697,  1887. 


CHAP.  XI.]  TITLE.  227 

licensee,  at  the  suit  of  any  co-tenant  of  any  such  licensor.1  It 
seems  to  logically  follow  that  no  recovery  of  profits  or  dam- 
ages can  be  had  against  one  co-tenant,  who,  without  the  con- 
sent of  the  others,  has  made,  used  or  sold  specimens  of  the 
patented  thing.  That  doctrine  has  however  been  denied 
by  one  federal  judge  ; a  and  doubted  by  another  ; 3  though 
it  has  been  enforced  by  a  third,4  and  by  the  Supreme  Court 
of  Massachusetts ; &  and  by  the  Supreme  Court  of  New 
York.6  Either  one  of  several  co-tenants  in  a  patent  right, 
may  of  course  sell  his  right  independently  of  the  others ; 7 
but  where  joint  trustees  are  appointed  to  hold  the  legal 
title  to  a  patent,  and  to  manage  it  according  to  their  mutual 
judgment  and  discretion,  a  joint  deed  of  all  those  trustees 
is  necessary  to  convey  that  right  to  another.8 

§  295.  Partition  of  a  patent  right,  held  by  tenancy  in  com- 
mon, may  of  course  be  made  by  the  common  consent  and 
mutual  action  of  all  the  owners  of  that  right ;  but  no  such 
partition  can  be  made  against  the  will  of  either  owner, 
except  possibly  in  a  court  of  equity.  This  rule  follows  from 
the  fact  that  no  partition  of  estates  held  by  tenancy  in  com- 
mon was  compellable  at  common  law ; '  and  from  the  fact 
that  no  United  States  statute  has  provided  for  any  such 
partition  ;  and  from  the  fact  that  the  State  statutes  relevant 
to  partition  of  property  which  is  held  under  the  laws  of 
the  States,  cannot  apply  to  any  property  which  is  created 
by  the  laws  of  the  nation.  Whether  a  compulsory  partition 
of  a  patent  right,  held  by  tenants  in  common,  is  within  the 
power  of  courts  of  equity,  is  a  question  upon  which  there  is 
no  precedent  in  the  reports,  and  the  decision  of  wrhich  must 


1  Dunham  «.  Railroad  Co.  7  Bis-  232,  1862. 

sell,  223,  1876.  « De   Witt  «.   Mfg.    Co.  5  Hun 

2  Pitts  «.  Hall,  3Blatch.  207, 1854.  (N.  Y.),  301,  1875. 

8  Dunham  v.  Railroad  Co.  7  Bis-  7  May  «.  Chaff ee,  2  Dillon,  388, 

sell,  223,  1876.  1871. 

'-  Whiting  v.  Graves,  3  Bann.  &  8  Wiscott  v.  Agricultural  Works, 

Ard.  225,  1878.  11  Fed.  Rep.  302,  1882. 

*  Vose  v.  Singer,  4  Allen  (Mass.),  9  Blackstone,  Book  2,  Ch.  12. 


228  TITLE.  [CHAP.  xi. 

depend  upon  equitable  considerations.  That  decision  when 
made,  will  probably  be  in  the  negative  ;  because  the  pecu- 
liar nature  of  property  in  patents,  would  probably  cause 
such  partitions  to  materially  diminish  the  value  of  the  prop- 
erty partitioned,  and  also  would  probably  render  an  equit- 
able partition  impossible. 


CHAPTER  XH. 


LICENSES. 


296.  Licenses  defined  and  described. 

297.  Express  licenses  to  make,  with 
implied  leave  to  use,  or  implied 
leave  to  sell  the  things  made. 

298.  Express  licenses  to  use,  with 
implied  leave  to  make  for  use. 

299.  Express  licenses  to  sell,  with 
implied  leave  to  the  vendees  to 
use  and  to  sell  the  things  they 
purchase. 

300.  Licenses  to  make  and  use,  with- 
out implied  leave  to  sell. 

301.  Licenses  to  make  and  sell,  or 
to  use  and  sell,   with   implied 
leave  to  the  vendees  to  use  and 
to  sell  the  articles  they  buy. 

302.  Express  licenses  so  restricted 
as  not  to  convey  implied  rights. 


|  303. 
i  304. 
i  305. 


306. 
307. 


309. 
310. 
311. 
312. 

i  313. 

314. 
I 


Written  and  oral  licenses. 

Recording  and  notice. 

Licenses  given  by  one  of  sev- 
eral owners  in  common,  and  li- 
censes given  to  one  of  several 
joint  users. 

Construction  of  licenses. 

Warranty  and  eviction. 

Clauses  of  forfeiture. 

Effects  of  forfeiture. 

Assignability  of  licenses. 

Purely  implied  licenses. 

Implied  licenses  from  conduct, 
and  first  by  acquiescence. 

Implied  license  from  conduct 
by  estoppel. 

Implied  license  from  actual  re- 
covery of  damages  or  profits. 


§  296.  ANY  conveyance  of  a  right  under  a  patent,  which 
does  not  amount  to  an  assignment  or  to  a  grant,  is  a  license.1 
It  is  a  license,  if  it  does  not  convey  the  entire  and  unquali- 
fied monopoly,  or  an  undivided  interest  therein,  throughout 
the  particular  territory  to  which  it  refers.*  Consistently 
with  this  definition,  the  following  have  been  held  to  consti- 
tute licenses  only :  an  exclusive  right  to  make  and  sell,  but 
not  to  use  : 3  an  exclusive  right  to  make  and  use,  but  not  to 
sell : 4  an  exclusive  right  to  use  and  sell,  but  not  to  make  : D 


1  Seibert  Oil  Cup  Co.  v.  Lubrica- 
tor Co.  34  Fed.  Rep.  221,  1888. 

8  Gayler  D.  Wilder,  10  Howard, 
494,  1850;  Sanford  v.  Messer,  1 
Holmes,  149,  1872;  Hill  v.  Whit- 
comb,  1  Holmes,  321,  1874. 

8  Hayward  «.  Andrews,  106  U.  S. 


673,  1882;  Dorsey  Rake  Co.  v.  Mfg. 
Co.  12  Blatch.  203,  1874. 

4  Mitchell  v.  Hawley,  16  Wallace, 
544,  1872. 

5  Hamilton     «.     Kingsbury,     17 
Blatch.  265,  1879. 

229 


230  LICENSES.  [CHAP.  xn. 

an  exclusive  right  to  make,  to  use,  and  to  sell  to  be  used, 
for  certain  purposes,  but  for  no  other.1  "  The  right  to 
manufacture,  the  right  to  sell,  and  the  right  to  use,  are  each 
substantive  rights,  and  may  be  granted  or. conferred  separ- 
ately by  the  patentee."  2  Any  one  or  two  of  these  rights  may 
be  expressly  conveyed  by  a  patentee,  while  the  other  is 
expressly  retained  by  him.  In  the  absence  of  express 
reservation,  however,  some  licenses  are  extended  by  impli- 
cation, so  as  to  convey,  not  only  what  they  expressly  cover, 
but  also  some  other  right  which  is  necessary  to  the  full  en- 
joyment of  the  right  expressly  conveyed.  This  doctrine  is 
not  in  conflict  with  the  rule  which  prohibits  the  enlarge- 
ment of  an  instrument  in  writing  by  parol  evidence  ;  because 
that  rule  is  directed  only  against  the  admission  of  oral  evi- 
dence of  the  language,  used  by  the  parties  in  a  contract 
which  was  reduced  to  writing.3  This  doctrine  relates  to 
the  legal  effect  of  the  language  actually  written,  and  is 
based  on  that  maxim  of  the  common  law  which  prescribes, 
that  any  one  granting  a  thing,  impliedly  grants  that,  without 
which,  the  thing  expressly  granted  would  be  useless  to  the 
grantee." 

§  297.  An  express  license  to  make  specimens  of  a  patented 
thing,  is  without  value,  unless  it  implies  a  right  to  use,  or  a 
right  to  sell,  the  specimens  made  thereunder.  It  is  not  to 
be  presumed  that  a  right  so  nugatory  as  a  bare  right  to 
make,  was  the  only  subject  of  a  license  for  which  a  valuable 
consideration  was  paid.  Whether  the  implied  right,  which 
accompanies  such  a  license,  is  a  right  to  use  or  a  right  to 
sell,  can  best  be  determined  by  ascertaining  the  circum- 
stances which  surrounded  the  giving  of  the  particular  license 
in  question.  If  the  licensee  was  engaged  in  a  business 
which  made  it  convenient  for  him  to  use  the  thing  involved, 
then  the  right  to  use  will  be  implied  in  preference  to  the 


1  Gamewell     Telegraph    Co.     v.  3  Greenleaf  on  Evidence,  Section 
Brooklyn,  14  Fed.  Rep.  255,  1882.  277. 

2  Adams  v.  Burke,    17  Wallace,  4  Steam  Stone  .Cutter  Co.  v.  Sbort- 
456,  1873.  sleeves,  10  Blatch.  382,  1879. 


CHAP.  XII.]  LICENSES.  231 

right  to  sell,  because  it  is  the  more  natural  implication  in 
such  a  case.  On  the  other  hand,  if  the  licensee  had  no 
occasion  to  use  the  thing  in  view,  but  was  engaged  in  mak- 
ing and  selling  similar  things,  for  the  use  of  others,  then  a 
right  to  sell  will  be  implied  from  a  right  to  make.1  Eights 
to  both  use  and  sell  will  not  be  implied  from  an  express 
license  to  make,  because  only  one  of  those  rights  is  neces- 
sary to  the  beneficial  enjoyment  of  such  a  license.  An  ex- 
press license  to  make  specimens  of  a  particular  thing  does 
not  imply  a  license  to  use  a  particular  patented  machine 
for  that  purpose,  even  where  the  patent  on  that  machine 
was  owned  by  the  licensor,  at  the  time  of  the  license,  and 
even  where  that  machine  was  then  the  best-known  means  of 
making  the  thing  licensed.2 

§  298.  An  express  license  to  use  a  limited  or  unlimited 
number  of  specimens  of  a  patented  article,  implies  a  right . 
to  make  those  specimens,  and  to  employ  others  to  make 
them,  and  will  protect  those  others  in  making  them  for  the 
use  of  the  licensee.3  If  the  license  to  use,  covers  a  greater 
length  of  time  than  one  specimen  of  the  thing  to  be  used 
will  last ;  then  there  is  an  implied  right  in  the  licensee  to 
repair  or  to  rebuild  that  specimen,  or  to  replace  it  by  an- 
other specimen  made  or  purchased  for  that  purpose.4 

§  299.  An  express  license  to  sell  specimens  of  a  patented 
thing,  does  not  imply  any  right  to  make  those  specimens, 
because  it  is  to  be  presumed  that  they  may  be  obtained  by 
purchase,  and  because  no  person  requires  any  license  to  en- 
able him  to  lawfully  buy  an  article  covered  by  any  patent. 
But  a  license  to  sell  does  imply  that  a  right  to  use  and  to 
sell  again  shall  be  conferred  on  the  vendees  of  the  licensee, 
for  otherwise  no  persons  would  buy  except  for  exportation, 
and  sales  for  exportation  are  seldom  sufficiently  practicable 

1  Steam  Cutter  Co.  v.  Sheldon,  10  4  Wilson    v.   Stolley,  4  McLean, 
Blatch.  8,  1872.  275,  1847;  Bickuell  v.  Todd,  5  Mc- 

2  Troy  Nail  Factory  v.  Corning,  14  Lean,    236,   1851;    Woodworth    t. 
Howard,  193,  1852.  Curtis,  2  Woodbury  &  Minot,  524, 

3  Steam  Stone  Cutter  Co.  «.  Short-  1847;  Steam  Cutter  Co.  «.  Sheldon, 
sleeves,  16  Blatch.  381,  1879.  10  Blatch.  8,  1872. 


232  LICENSES.  [CHAP.  xn. 

to  raise  a  presumption  that  they  alone  were  contemplated 
by  the  parties  to  a  license  to  sell. 

§  300.  A  license  to  make  and  use  does  not  authorize  any 
sale  of  the  thing  so  made,  nor  authorize  any  purchaser  of 
that  thing  to  use  the  same.1  Nor  does  a  sale,  coupled  with 
an  express  license  to  use,  give  any  right  to  use  after  the 
license  has  been  forfeited  or  has  expired.'  The  purchaser 
of  a  patented  thing  gets  no  other  right  to  use  it  than  such 
right  as  the  seller  had  an  express  or  an  implied  right  to 
convey.3  And  the  purchaser  of  a  thing  which  is  useful  only 
in  producing  a  patented  article,4  or  in  being  combined  with 
other  things  to  constitute  a  patented  article,5  or  when  used 
to  perform  a  patented  process,6  gets  thereby  no  right  to  use 
his  purchased  thing  for  such  a  purpose. 

§  301.  A  license  to  make  and  sell,  or  a  license  to  use  and 
sell,  implies  a  right  in  the  purchaser  to  use,  and  to  sell 
again,  the  thing  thus  lawfully  sold  to  him.  When  a  specimen 
of  a  patented  invention  is  sold  with  the  authority  of  the 
owner  of  the  patent  which  covers  it,  and  without  any  restric- 
tion on  the  ownership  or  use  of  the  thing  conveyed,  then  that 
specimen  passes  out  of  the  exclusive  right  which  is  secured 
by  the  patent,  and  may  be  used  as  long,  or  sold  as  often,  as 
though  it  had  never  been  subject  to  a  patent.7  The  same 
result  also  follows  from  a  sheriffs  sale  of  a  patented  article, 
where  that  sale  was  made  in  pursuance  of  an  execution, 
issued  against  the  owner  of  the  patent  right,  and  lawfully 


1  "Wilsons.  Stolley,  4  McLean, 277,  6  United  Nickel  Co.  v.  Electrical 
1847.  Works,  25  Fed.  Rep.  479,  1885. 

2  Wortendyke  v.  White,  2  Bann.  '  Bloomer  v.  McQuewan,  14  How- 
&  Ard.  25,  1875;  Porter  Needle  Co.  ard,   539,  1852;  Chaffee  v.   Belting 
0.  National  Needle  Co.  17  Fed.  Rep.  Co.  22  Howard,  217,  1859;  Adaras 
536,  1883.  v.  Burke,  17  Wallace,  453, 1873;  Pa- 

3  Chambers  «.  Smith,  5  Fisher,  14,  per-Bag  Cases,  105  U.  S.  771,  1881; 
1870.  McKay  v.  Wooster,  2  Sawyer,  373, 

4  Stevens  v.  Cady,  14  Howard,  528,  1873;  May  v.  Chaffee,  2  Dillon,  385, 
1852;  Stevens®.  Gladding,  17  How-  1871;    Detweiler  v.  Voege,  8  Fed. 
ard,  447,  1854.  Rep.  600,  1881;  Holiday  ».  Matthe- 

5  Roosevelt  v.  Electric  Co.  20  Fed.  son,  24  Fed.  Rep.  185,  1885. 
Rep.  724,  1884. 


CHAP.  XII. J  LICENSES.  233 

levied  on  that  article,  as  the  property  of  that  owner.1  But 
no  person  acquiring  the  ownership  of  mutilated  portions  of 
a  specimen  of  a  patented  thing,  can  lawfully  reconstruct 
that  specimen  by  adding  the  missing  parts,  and  still  less  can 
he  lawfully  use  or  sell  the  entire  article  when  reconstructed.1 
Nor  can  a  purchaser  lawfully  repair  his  purchased  machine, 
by  replacing  parts  which  are  patented  alone,  or  which  are 
the  main  elements  of  patented  sub-combinations ; 3  but 
a  purchaser  may  repair  a  patented  machine  which  he  has 
purchased,  by  replacing  worn  out  unpatented  parts,  so  long 
as  the  identity  of  the  machine  is  not  destroyed.4 

§  302.  Express  licenses  which,  if  unrestricted,  would  con- 
vey implied  rights,  may  be  so  restricted  that  they  will  not 
have  that  effect.*  A  license  to  make  and  sell  may  be  so 
restricted  that  the  things  made  and  sold  under  it  cannot 
be  lawfully  used  in  certain  specified  parts  of  the  United 
States ;  or  so  restricted  that  the  licensee  cannot  make  and 
sell  the  patented  thing  anywhere  in  the  United  States,  with 
intent  to  have  it  exported  to  a  foreign  country.6  A  license 
to  use  and  sell  may  likewise  be  restricted  in  the  same  way. 
A  license  to  make  and  use  may  be  so  restricted  that  the 
patented  thing  cannot  be  used  in  certain  specified  parts  of 
the  United  States,7  and  cannot  be  used  anywhere  in  the 
United  States,  during  certain -specified  spaces  of  time.8 

§  303.  Licenses  may  be  written,  or  they  may  be  oral.  The 
former  have  no  advantage  over  the  latter,  except  that  they 
can  usually  be  proved  with  more  ease  and  more  certainty, 
and  except  that  the  latter  may  sometimes  be  invalid  be- 
cause obnoxious  to  some  statute  of  frauds.  Those  excep- 
tions, however,  constitute  an  abundant  reason  for  embody- 

1  Wilder  v.  Kent,  15  Fed.  Rep.  64,1878;  Hamilton  «.  Kingsbury,  17 

217,  1883.  Blatch.  264,  1879. 

*  American  Cotton  Tie  Co.  v.  Sim-  6  Dorsey  Rake  Co.  v.  Mfg.  Co.  12 

mons,  106  U.  S.  89,  1882.  Blatch.  204,  1874. 

3  Singer  Co.  «.  Foundry  Co.  34  '  Wicke  «.  Kleinknecht,  1  Bann. 
Fed.  Rep.  394,  1888.  &  Ard.  608.  1874. 

4  Young  v.  Foerster,  37  Fed.  Rep.  8  Mitchell  v.  Hawley,  16  Wallace, 
203,  1889.  544,  1872. 

5  Hamilton  fl.Kiugsbury,  15  Blatch. 


234  LICENSES.  [CHAP.  xn. 

ing  all  such  contracts  in  plain  black  and  white  documents, 
rather  than  committing  them  to  the  "  slippery  memory  of 
man/' 

§  304.  No  license  is  required  to  be  recorded,1  and  no 
record  of  a  license  affects  the  rights  of  any  person ;  for  ;v 
license  is  good  against  the  world,8  whether  it  is  recorded  or 
not.3  So  also,  if  a  license  is  embodied  in  two  papers,  one 
of  which  limits  the  scope  of  the  other,  an  assignee  of  the 
broader  document  will  take  subject  to  the  limitations  of  the 
narrower,  even  if  he  had  no  notice  of  its  provisions,  or  even 
of  its  existence.  Nor  will  the  fact  that  the  broader  docu- 
ment was  recorded,  and  the  narrower  one  unrecorded,  alter 
or  affect  the  operation  of  this  rule.4  It  follows,  that  where 
two  licenses  conflict,  the  first  must  prevail  even  though  the 
taker  of  the  second,  had  no  notice  of  the  existence  of  the 
first ;  and  it  also  follows  that  any  license  will  prevail  as 
against  the  claims  of  any  subsequent  assignee  or  grantee 
of  the  patent  right  involved.6 

§  305.  A  license  from  one  of  several  owners  in  common 
of  a  patent  right,  is  as  good  as  if  given  by  all  those  owners ; e 
and  a  license  given  to  one  of  several  joint  makers  or  users  of 
a  patented  thing  is  as  good  as  if  given  to  all,  if  the  licensor 
gives  it  with  the  understanding  that  the  thing  licensed  to  be 
done  is  to  be  done  jointly,  or  is  to  be  done  by  the  express 
licensee  on  behalf  of  the  other  party.7 

§  306.  The  construction  of  a  license  in  writing,  depends 
upon  the  same  general  rules  as  the  construction  of  other 
written  contracts.8  For  example,  it  is  to  be  construed  in 
the  light  of  the  circumstances  which  surrounded  its  execu- 

1  Brooks  0.  Byam,  2  Story,  525,          5  Continental  Windmill  Co. ».  Era- 
1843;  Consolidated  Fruit  Jar  Co.  v.      pire  Windmill  Co.  8  Blatch.  295, 
Whitney,  2  Bann.  &  Ard.  38,  1875;      1871. 

Buss  v.  Putney,  38  N.  H.  44,  1859.  6  Dunham  v.  Railroad  Co.  7  Bis- 

2  Chambers  v.  Smith,  5  Fisher,  14,       sell,  224,  1876. 

1870.  7  Bigelow  v.  Louisville,  3  Fisher, 

3  Farrington  v.  Gregory,  4  Fisher,      603,  1869. 

221,  1870.  8  Wetherell  v.  Zinc  Co.  6  Fisher, 

4  Hamilton  •c.Kiugsbury,17Blatch.       50,  1872. 
264  and  460,  1880. 


CHAP.  XII.]  LICENSES.  235 

tion.1  Accordingly,  where  the  owner  of  several  patents 
licenses  a  person  to  make,  use  or  sell  a  particular  class  of 
things  which,  if  made,  used  or  sold  without  a  license,  would 
infringe  all  those  patents,  then  that  license  confers  a  right 
under  them  all.2 

§  307.  No  warranty  of  validity  of  the  letters  patent  is  im- 
plied in  any  license  given  thereunder,  and  unattended  proof 
of  invalidity  is  therefore  no  defence  to  any  suit  for  promised 
royalties.3  As  long  as  a  licensee  continues  to  enjoy  the 
benefit  of  the  exclusive  right,  he  must  pay  the  royalty  which 
he  promised  to  pay,  and  he  cannot  escape  from  so  doing  by 
offering  to  prove  the  patent  to  be  void.4  But  a  license  does 
imply  that  the  licensee  shall  not  be  evicted  from  its  enjoy- 
ment, and  such  an  eviction  is  a  defence  to  a  suit  for  royal- 
ties accruing  after  it  occurred." 

Such  an  eviction  occurs  whenever  the  patent  is  adjudged 
void  in  an  interference  suit  prosecuted  in  equity  in  pur- 
suance of  Section  4918  of  the  Revised  Statutes.  In  one 
case  it  was  held  that  such  an  eviction  occurs  whenever  the 
Patent  Office  decides  against  the  patent,  in  an  interference 
between  it  and  an  application  filed  after  it  was  granted.8 
That  holding  was  wrong,  because  it  was  based  on  the  state- 
ment that  the  decision  of  the  Patent  Office,  in  the  interfer- 
ence case,  rendered  the  unsuccessful  patent  void.  That 
statement  was  entirely  erroneous ;  for  that  result  can  only 
be  obtained  by  an  action  in  equity  under  Section  4918  of 
the  Revised  Statutes.7  The  decision  of  the  New  York  Court 


1  Burdell  v.  Denig,  92  U.  S.  722,  bach  v.  Excavating  Apparatus  Co. 
1875.  35  Off.  Gaz.  1339,  1886. 

2  Day  v.  Stellraan,  1  Fisher,  487,  4  Burr  v.  Duryee,  2  Fisher,  285, 
1859.  1862. 

3  Birdsall  v.  Perego,  5  Blatch.  251,  6  White  v.  Lee,  14  Fed.  Rep.  791, 
1865;  Sargent  v.  Lamed,  2  Curtis,  1882. 

340,  1855;  Marsh  v.  Dodge,  4  Hun  «  Marston  v.  Sweet,  82  N.  Y.  526, 

(N.  Y.),  278,  1875;  Bartlett  v.  Hoi-  1880. 

brook,  1  Gray  (Mass.),  118,  1854;  T  Union  Paper-Bag  Machine  Co  v. 
Marston  v.  Sweet,  66  N.  Y.  207,  Crane,  1  Holmes,  429,  1874;  Wire 
1876;  Pope  Mfg.  Co.  v.  Owsley,  27  Book  Sewing  Machine  Co.  v.  Steven- 
Fed.  Rep.  105,  1886;  Schwarzen-  son,  11  Fed.  Rep.  155,  1882. 


236  LICENSES.  [CHAP.  xn. 

of  Appeals  in  Peck  v.  Collins,1  was  cited  as  the  authority 
for  that  statement ;  but  on  turning  to  Peck  v.  Collins,  we 
find  that  it  was  the  surrender  of  the  patent  that  annulled 
it,  and  the  Supreme  Court  of  the  United  States  so  decided, 
when  the  case  reached  that  tribunal."  Such  eviction  will 
also  occur,  whenever  the  patent  is  repealed,  by  the  decree 
of  a  court  in  which  an  action  is  brought  by  the  United 
States  for  that  purpose.  This  statement  is  ventured  on 
the  analogy  of  what  was  meant  to  be  decided  in  the  case  of 
Marston  v.  Sweet ;  namely,  that  a  licensee  is  evicted  from  the 
enjoyment  of  his  license  whenever  the  patent  is  judicially 
annulled.  Such  eviction  also  occurs,  whenever  the  licensee 
is  enjoined  from  acting  under  it,  at  the  suit  of  the  owner  of 
a  senior  patent ; 3  and  by  parity  of  reasoning,  it  occurs  when- 
ever a  judgment  or  decree  is  obtained  by  the  owner  of  a 
senior  patent,  against  the  licensee  for  an  infringement  which 
consisted  of  acting  under  the  license.  Such  an  eviction  will 
also  probably  be  held  to  occur  whenever  the  patent  is  defied 
by  unlicensed  persons,  so  extensively  and  so  successfully  as 
to  deprive  the  licensee  of  the  benefit  of  his  share  in  the  ex- 
clusive right  which  it  was  supposed  to  secure.  But  a  single 
successful  defiance  is  not  enough  to  constitute  such  an 
eviction.4 

§  308.  A  license  not  expressly  limited  in  duration  continues 
till  the  patent  expires  or  the  license  is  forfeited.6  Forfeit- 
ure of  a  license  does  not  follow  from  the  single  fact  that  the 
licensee  has  broken  some  covenant  which  was  made  by  him 
when  accepting  the  license ;  unless  the  parties  expressly 
agreed  that  such  a  forfeiture  should  follow  such  a  breach.8 
And  even  where  such  an  agreement  is  made,  it  will  not 

1  Peck  t>.  Collins,  70  K  Y.  376,  Rep.  791,  1887. 
1877.  «  White  v.  Lee.  5  Bann.  &  Ard. 

8  Peck  v.  Collins,  103  U.  S.  664,  572, 1880;  Consolidated  Purifier  Co. 

1880.  e.  Wolf,  28  Fed.   Rep.  814,   1886; 

3  Pacific  Iron  Works  v.  Newhall,  Densmore  v.  Tanite  Co.  32  Fed.  Rep. 
34  Connecticut,  67,  1867.  544,  1887 ;  Seibert  Oil  Cup  Co.  v. 

4  Pope  Mfg.    Co.   v.   Owsley,  27  Lubricator  Co.  34  Fed.  Rep.  221, 
Fed.  Rep.  108,  1886.  1888;  Hammacher  v.  Wilson,  26  Fed. 

5  Starling  v.  Plow  Works,  29  Fed.  Rep.  241,  1886. 


CHAP.  XII.]  LICENSES.  237 

always  be  enforced.  For  example,  non-payment  of  royalty 
on  the  very  day  it  becomes  due,  will  not  work  a  forfeiture, 
if  that  non-payment  arose  from  lack  of  certainty  relevant 
to  the  place  of  payment,  and  from  lack  of  demand  from  the 
licensor.1  Nor  will  forfeiture  of  a  license  result  from  the 
fact  that  the  licensee  has  infringed  the  patent  by  doing  acts, 
with  the  invention,  which  were  unauthorized  by  the  license. 
The  license  will  not  protect  him  in  such  doings,  but  it  will 
continue  to  protect  him  in  doing  the  acts  which  it  did 
authorize.2  Indeed  forfeitures  are  not  favored  by  the  law  ; 
and  courts  are  always  prompt  to  seize  upon  any  circum- 
stance which  indicates  an  agreement  or  an  election  to  waive 
one,3  and  an  injunction  will  issue  to  prevent  a  threatened 
wrongful  declaration  of  forfeiture.4 

§  309.  Where  a  license  is  really  forfeited,  and  the  licensee 
continues  to  work  under  it  as  though  it  were  still  in  force, 
the  licensor  has  an  option  to  sue  him  as  an  infringer,  or  to 
sue  him  for  the  promised  royalties.6  If  he  selects  the  first 
of  these  remedies,  the  infringer  may  generally  interpose 
any  defence  that  he  could  have  set  up  in  the  absence  of  a 
license.'  If  there  is  an  exception  to  this  rule,  that  excep- 
tion exists  where  the  license  contained  an  agreement  on  the 
part  of  the  licensee  not  to  contest  the  validity  of  the  patent. 
Whether  or  not  there  is  such  an  exception  to  the  general 
rule,  has  never  yet  been  settled,  though  the  point  has  been 
raised  and  considered.7  The  question  seems  to  be  whether 
a  forfeited  contract  is  binding  upon  the  party  that  suffered 
the  forfeiture  ;  and  if  so,  whether  a  party  can  make  a  valid 

1  Dare  v.  Boylston,  6  Fed.  Rep.  166,  1846 ;   Cohn  v.  Rubber  Co.  3 
493,  1880.  Bann.  &  Ard.  572,  1878;  Union  Mfg. 

2  Wood  ®.  Wells,  6  Fisher,  383,  Co.«.  Lounsbury,  42Barbour(N.Y.), 
1873;  Steam  Cutter  Co.  v.  Sheldon,  125,  1864;  Starling  «.  Plow  Works. 
10  Blatch.  1,  1872.  32  Fed.  Rep.  290,  1887. 

3  Insurance  Co.  ».  Eggleston,  96  *  Woodworth  v.  Cook,  2  Blatch. 
U.  S.  572,  1877.  160,  1850;  Burr  v.  Duryee,  2  Fisher, 

4  Baker  Mfg.  Co.  t>.  Washburn  &  283,  1862  ;    Brown  v.   Lapham,  27 
Moen  Mfg.  Co.  18  Fed.  Rep.  172,  Fed.  Rep.  77,  1886. 

1883.  '  Wooster  v.   Mfg.    Co.    23    Off. 

5  Woodworth  t>.  Weed,  1  Blatch.      Gaz.  2513,  1883. 


238  LICENSES.  [CHAP.  xn. 

contract  to  omit  a  legal  defence  when  brought  into  court  in 
response  to  the  suit  of  another  party.1  If  the  licensor 
selects  the  second  of  the  remedies  mentioned  in  this  section 
he  must  sue  at  law,  and  not  in  equity.3 

§  310.  No  license  is  assignable  by  the  licensee  to  another, 
unless  it  contains  words  which  show  that  it  was  intended 
to  be  assignable.3  The  most  suitable  phrase  with  which  to 
express  such  an  intention,  would  include  the  word  "as- 
signs;" but  in  one  case  it  was  held  that  the  words  "legal 
representatives "  would  answer  the  purpose,  because  the 
license  fairly  indicated  that  the  parties  understood  that 
phrase  to  include  "  assigns"  as  well  as  "  executors  or  ad- 
ministrators." 4  But  even  unassignable  licenses  may  some- 
times be  invoked  by  persons  who  are  not  exactly  identical 
with  the  licensees.  A  railroad  company  which  was  formed 
by  the  consolidation  of  prior  railroad  companies,  may  in- 
voke the  licenses  which  were  given  to  either  of  its  con- 
stituent corporations ;  because  the  consolidated  company 
is  a  successor  rather  than  an  assignee  of  those  companies/ 
So  also,  a  license  to  a  corporation,  will  protect  a  receiver 
who  is  authorized  to  manage  its  business  during  its  embar- 
rassments.6 Where  a  license  is  given  to  a  partnership, 
composed  of  several  persons,  and  where  that  partnership  is 
dissolved,  and  its  business  is  continued  by  one  of  the  part- 
ners, that  partner  is  entitled  to  that  license ; 7  as  also  is  a 
receiver  appointed  to  wind  up  the  partnership  affairs.8  But 
a  license  to  one  person  gives  no  right  to  any  partner  of  that 


1  Pope  Mfg.  Co.  Gormully,  34  Fed.  Howard,  22  Fed.  Rep.  657,  1884. 
Rep.  877,  1888.  4  Hamilton     e.     Kingsbury,      15 

2  Consolidated     Purifier    Co.     v.  Blatch.  69,  1878. 

Wolf,  28  Fed.  Rep.  816,  1886.  5  Lightner  «.  Railroad  Co.  1  Low- 

3  Troy    Factory    v.    Corning,    14  ell,  338,  1869. 

Howard,  193,  1852 ;  Rubber  Co.  v.  6  Emigh  v.  Cbamberlin,  2  Fisher, 

Goodyear,    9  Wallace,    788,    1869;  192.1861. 

Hapgood  ®.  Hewitt,  119  U.  S.  226,  '  Belding®.  Turner,  8  Blatch.  321, 

1886  ;  Baldwin  <o.  Sibley,  1  Clifford,  1871. 

150,  1858  ;  Searls  «.  Bouton,  12  Fed.  8  Montross  v.  Mabie,  30  Fed.  Rep. 

Rep.   143,   1882 ;    Bull  v.  Pratt,   1  234,  1887. 

Connecticut,  342,  1815 ;   Adams  0. 


CHAP.  XII.]  LICENSES.  239 

person,  or  to  any  corporation  organized  by  the  licensee ; ' 
and  if  it  authorizes  the  licensee  to  act  only  at  a  particular 
place,  it  will  not  protect  any  of  his  doings  elsewhere."  And 
no  license  to  a  man  and  any  partner  he  may  take,  will  pro- 
tect any  assignee  of  that  man  when  acting  alone.3  Nor 
does  an  unassignable  license  pass  to  an  executor  or  ad- 
ministrator of  a  deceased  licensee.4  The  non-assignability 
of  a  license,  may  be  waived  by  the  licensor,  and  will  be  so 
waived  if  he  accepts  the  promised  royalty  from  the  assignee 
of  the  licensee ; 5  or  ratines  the  transfer  of  the  license,  by 
otherwise  treating  the  assignee  as  the  licensee  was  entitled 
to  be  treated.6 

Assignable  licenses  are  assignable  only  in  their  entirety, 
unless  they  expressly  or  impliedly  authorize  their  assign- 
ment in  parts,  and  to  a  plurality,  of  persons.7  The  pur- 
chaser of  a  license,  takes  it  subject  to  all  the  restrictions 
connected  therewith,  whether  he  has  notice  of  those  restric- 
tions or  not ; "  and  subject  to  liability  for  the  same  rate  of 
royalty  for  his  doings,  that  the  licensee  would  have  had  to 
pay  for  similar  acts ;  but  not  subject  to  any  royalty,  or 
other  money,  due  from  the  licensee  to  the  licensor,  at  the 
time  of  the  assignment  of  the  license.9 

§  311.  Purely  implied  licenses  may  arise  from  the  con- 
duct of  patentees  and  grantees  of  patents,  or  from  recov- 
eries by  them,  of  profits  or  damages  for  certain  classes  of 
infringements.  Many  of  the  rules  which  have  thus  far  in 
this  chapter,  been  stated  and  explained  in  connection  with 
purely  express  licenses,  and  in  connection  with  express 

1  Eclipse  Windmill  Co.  v.  Wind-      724,  1875. 

mill  Co.  24  Fed.  Rep.  650,  1885.  »  Brooks  v.  Byam,  2  Story,  545, 

2  Rubber  Co.  V.  Goodyear,  9  Wai-  1843  ;  Consolidated  Fruit  Jar  Co.  v. 
lace,  788,  1869.  Whitney,  1  Bann.  &  Ard.  356,  1874; 

3  Gibbs  v.  Hoefner,  19  Fed.  Rep.  Adams  v.   Howard,  22  Fed.   Rep. 
324,  1884.  656,  1884. 

4  Oliver  v.  Chemical  Works,  109  8  Chambers  v.  Smith,  5  Fisher,  12, 
U.  S.  81, 1883.  1870. 

&  Bloomer  v.  Gilpin,  4  Fisher,  55,          •  Goodyear  v.  Rubber  Co.  SBlatch. 
1859.  449,  1856. 

6  Hammond  v.  Organ  Co.  92  U.  S. 


240  LICENSES.  [CHAP.  xn. 

licenses  having  implied  incidents,  are  also  applicable  to 
licenses  which  are  purely  implied.  Little  or  nothing  re- 
mains to  be  said  about  the  latter,  except  to  state  the  classes 
of  circumstances  out  of  which  they  are  found  to  spring. 

§  312.  Implied  licenses,  from  conduct  of  owners  of  patent 
rights,  may  arise  out  of  any  one  of  a  considerable  number 
of  classes  of  facts;  but,  when  analyzed,  those  facts  will 
probably  always  be  found  to  thus  operate  by  virtue  of  the 
doctrines  of  acquiescence,  or  the  doctrines  of  estoppel. 
Where  the  owner  of  a  patent  right  acquiesces  in  the  doings 
of  one  who  makes,  uses,  or  sells  specimens  of  the  patented 
invention,  and  where  that  owner  also  accepts  partial  com- 
pensation for  such  doings,  a  license  will  be  implied  unless 
the  case  also  presents  other  facts  which  negative  such  an 
implication.1  Payment. of  full  compensation  would  be  a 
still  more  convincing  ground  upon  which  to  base  an  im- 
plied license ;  and  such  a  license  may  be  based  on  a  clear 
case  of  acquiescence,  even  if  no  payment  whatever  is  proved 
to  have  as  yet  been  actually  received.  But  acquiescence  in 
unpaid-for  use,  does  not  always  imply  that  no  compensa- 
tion is  to  be  expected.  Where  the  user  knew  of  the  patent, 
and  the  patentee  knew  of  the  use,  and  did  not  object  there- 
to ;  it  is  more  reasonable  to  imply  an  agreement  for  a 
quantum  meruit,  than  to  imply  that  the  patentee  donated 
the  use  of  his  invention  to  the  user,  or  to  imply  that  the 
user  unlawfully  seized  upon  the  invention  of  the  patentee.2 
But  where  the  patentee  was  specially  employed  by  the 
user  to  develop  the  business  of  the  latter,  at  the  time  the 
former  made  the  invention  used  in  that  business ;  the  law 
implies  a  license  to  continue  that  use  without  paying  roy- 
alty.3 In  no  case,  however,  can  a  license  be  implied  from 


1  Elan  chard  v.  Sprague,  1  Cliff.  8  Barry  «.  Mfg.  Co.  22  Fed.  Rep. 
297,  1859 ;   Seibert  Oil  Cup  Co.  «.  397,  1884 ;  Herman  v.  Herman,  29 
Lubricator  Co.   34  Fed.   Rep.  221,  Fed.    Rep.   94,    1886;    Solomons  v. 
1888.  United  Stales,  21   Court  of  Claims, 

2  United  States  v.  Palmer,  128  U.  483,  1886 ;  22  Court  of  Claims,  342, 
S.  269,  1888 ;  McKeever  v.  United  1887. 

States,  23  Off.  Gaz.  1527,  1883. 


CHAP.  XII.  J  LICENSES.  241 

acquiescence,  unless  the  licensor  had  knowledge  of  the 
thing  acquiesced  in;  nor  can  acquiescence  be  predicated 
even  of  knowledge  and  omission  to  interfere  with  the  do- 
ings of  the  infringer,  if  that  omission  is  fairly  accounted  for 
on  other  grounds. 

§  313.  The  estoppel  which  will  work  an  implied  license  is 
that  sort  which  is  most  accurately  denominated  estoppel  by 
conduct ;  and  all  of  the  following  elements  are  necessary  to 
its  existence.  1.  There  must  have  been  a  representation  or 
a  concealment  of  material  facts.  2.  The  representation 
must  have  been  made  with  knowledge  of  the  facts.  3.  The 
party  to  whom  it  was  made  must  have  been  ignorant  of  the 
truth  of  the  matter.  4.  It  must  have  been  made  with  the 
intention  that  the  other  party  should  act  upon  it.  5.  The 
other  party  must  have  been  induced  to  act  upon  it.1  6. 
That  act  must  be  hurtful  to  the  party  acting,  in  case  the 
estoppel  is  not  enforced  in  his  favor.2 

If  the  owner  of  a  patent  right  were  to  explain  the  pat- 
ented invention  to  a  person  ignorant  of  the  patent ;  and 
were  to  advise  him  to  make,  to  use,  or  to  sell  a  specimen 
of  that  invention,  with  intent  to  induce  him  to  infringe  the 
patent  unknowingly  ;  and  if  that  person  were  thereby  in- 
duced to  incur  expense  in  infringing  or  in  preparing  to  in- 
fringe that  patent,  then  it  would  follow  from  these  doc- 
trines of  estoppel,  that  an  implied  license  would  result  to  a 
person  thus  misled.  The  same  result  would  follow,  if  the 
owner  of  a  patent  right  were  to  conceal  the  existence  of  the 
patent  from  a  person  who,  to  his  knowledge,  was  about  to 
infringe  it  unknowingly  ;  if  that  concealment  were  done 
with  intent  to  allow  that  person  to  infringe ;  and  if  that 
person  incurred  expense  in  infringing  or  in  preparing  to  in- 
fringe, which  he  would  not  have  incurred  if  he  had  known 
of  the  patent.  So  also,  where  a  person  sells  a  patented 

1  M'Millin  v.  Barclay,  5  Fisher,  Penn.    State,   334,   1858 ;  Dezell  v. 
201,   1871  ;    Bigelow  on    Estoppel,  Odell,   3  Hill  (N.   Y.),  215,  1842 ; 
Ch.  18,  p.  437.  Patterson  v.  Lyttle,  11  Penn.  State, 

2  Railroad    Co.    v.    Duboise,    12  53,  1849. 
Wallace,  64, 1870  ;  Hill  v.  Epley,  31 


242  LICENSES.  [CHAP.  xn. 

macliine  to  another  without  having  any  interest  in  or  under 
the  patent,  he  will  be  estopped  from  prosecuting  his  vendee 
for  infringement  on  the  basis  of  any  after  acquired  title. 
And  where  a  person  sells  a  patent  which  employs  an  inven- 
tion which  infringes  a  prior  patent ;  the  person  selling  is 
estopped  from  bringing  an  action  against  his  grantee  for 
that  infringement ;  and  that  estoppel  operates  as  a  license 
not  only  as  against  the  seller  but  also  as  against  owners  in 
common  with  him  of  the  prior  patent.1 

§  314.  An  actual  recovery  of  a  full  license  fee,  in  an  in- 
fringement suit  for  unlicensed  making  and  selling  a  speci- 
men of  a  patented  thing,  operates  as  an  implied  license  to 
the  purchaser  of  that  specimen,  to  use  it  to  the  same  ex- 
tent that  he  could  lawfully  have  done,  if  the  infringer  had 
been  licensed  to  make  and  sell  it.2  But  to  effect  such  a 
result  something  more  than  a  judgment  or  a  decree  is  nec- 
essary. There  must  be  a  satisfaction  of  that  decree  or 
judgment.3  And  where  the  money  recovered  in  an  infringe- 
ment suit  for  unlicensed  making  and  selling  a  specimen  of 
a  patented  thing,  is  recovered  as  damages  for  such  making 
and  selling  alone,  that  recovery  does  not  operate  as  an  im- 
plied license  authorizing  the  use  of  that  specimen.4  Recov- 
eries based  on  unlicensed  use  of  a  patented  process  or 
thing,  are  necessarily  confined  to  such  use  as  occurred  be- 
fore the  suit  was  brought,  if  the  action  be  at  law,  or  to 
such  as  occurred  before  the  final  decree,  if  the  action  is  in 
equity  ;  and  it  therefore  follows  that  no  such  recovery  can 
operate  to  license  any  one  to  continue  such  use,  or  to  begin 
a  new  use  of  that  thing  or  that  process.5 

1  Cm-ran  v.  Burdsall,  20  Fed.  Rep.  Bussing,  12  Blatch.  426, 1885  ;  Fisher 
835,  1883.  v.  Amador  Mine,  25  Fed.  Rep.  201, 

2  Spaulding  v.   Page,  1   Sawyer,  1885 ;  Tuttle  v.  Matthews,  28  Fed. 
709,  1871 ;  Perrigo  •«.  Spaulding,  13  Red.  98,  1886  ;  American  Bell  Tele- 
Blatch.  391, 1876 ;  Steam  Stone  Cut-  phone  Co.  v.  Albright,  32  Fed.  Rep. 
ter  Co.   v.  Mfg.  Co.  17  Blatch.  31,  287,  1887. 

1879 ;  Booth  v.  Seevers,  19  Off.  Gaz.  4  Birdsell  c.  Shaliol,  112  U.  S.  485, 

1140,  1881 ;  Stutz  v.  Armstrong,  25  1884. 

Fed.  Rep.  147,  1885.  «  Suffolk  Co.  v.  Hayden,  3  Wal- 

3  Gilbert  &  Barker  Mfg.    Co,  v.  elac,  315,  1865. 


CHAPTEK  XIII. 


INTERFERING  PATENTS. 


315.  Causes  and  characteristics   of 
interfering  patents. 

316.  Actions  in  equity  between  in- 
terfering patents. 

317.  The  proper  issues  in  such  ac- 
tions. 

318.  The  force  of  the  decision  of 


the  Commissioner  of  Patents  on 
a  prior  interference  in  the 
Patent-Office. 

319.  Injunctions  in  interference  ac- 
tions. 

320.  The  proper  decrees  in  such  ac- 
tions. 


§  315.  PATENTS  which  contain  one  or  more  claims  in  com- 
mon, are  interfering  patents.  All  but  one  of  several  such 
patents  are  necessarily  void,  as  to  the  interfering  claim  or 
claims ;  though  all  may  be  valid  as  to  the  other  claims 
which  they  respectively  contain.1  There  are  two  causes 
which  lead  to  the  granting  of  interfering  claims.  Such 
claims  may  be  granted  because  of  inadvertence  or  erroneous 
judgment  on  the  part  of  the  Patent  Office ;  and  they  may 
be  granted  because  applications  do  not  always  happen  to 
be  made  in  the  order  of  invention.  The  first  cause  may 
operate  when  the  Patent  Office  examiners  overlook  an 
anticipating  patent,  while  examining  an  application  in  point 
of  novelty  ;  or  when  they  form  an  erroneous  opinion  that 
an  existing  patented  claim  is  substantially  different  from 
the  claim  under  immediate  inspection.  The  second  cause 
may  operate  when  one  person  who  is  an  original,  but  not 
the  first,  inventor  of  a  particular  thing,  applies  for  and  re- 
ceives a  patent  thereon,  before  another  person,  who  is  an 
original  and  the  first  inventor  of  that  thing,  files  his  appli- 
cation in  the  Patent  Office.  Under  such  circumstances,  it 
is  the  duty  of  the  Commissioner  to  declare  an  interference 
between  the  patent  and  the  unpatented  application,  and  if, 


Gold  and  Silver  Ore  Co.  v.  Disintegrating  Ore  Co.  6  Blatch.  811,  1869. 

243 


344  INTERFERING   PATENTS.  [CHAP.  XIII. 

in  that  interference  proceeding,  the  latter  applicant  is  ad- 
judged to  be  the  prior  inventor,  and  if  the  application  is 
otherwise  unobjectionable,  it  becomes  the  duty  of  the  Com- 
missioner to  grant  him  a  patent.1  The  Commissioner  has 
however  no  authority  to  recall  the  patent  theretofore 
granted  to  the  wrong  party.  That  patent  can  be  set  aside 
by  the  courts  alone. 

§  316.  A  suit  in  equity  is  the  prescribed  proceeding  by 
means  of  which  the  interfering  claims  of  two  or  more 
patents  may  be  adjudicated  upon,  in  point  of  comparative 
novelty.2  Such  an  action  may  be  joined  with  an  action  for 
infringement.3  The  complainant  in  such  a  suit  may  be  the 
patentee  or  assignee  of  either  of  the  interfering  patents,  or 
a  grantee  or  licensee  thereunder  ;  for  all  of  these  persons 
fall  within  the  category  mentioned  in  the  statute  :  a  cate- 
gory which  includes  every  person  interested  in  any  one  of 
the  patents,  or  in  the  working  of  the  invention  claimed 
under  any  of  them.  The  defendant  may  be  any  patentee, 
assignee  or  grantee  who  owns  an  interest  in  another  of  the 
interfering  patents ;  for  all  such  persons  are  "  owners" 
thereof.  It  is  neither  necessary  that  all  the  possible  com- 
plainants should  join  in  a  suit,  nor  that  all  the  possible  de- 
fendants should  be  brought  before  the  court.  The  statute 
provides  that  no  decree  entered  in  such  a  suit  shall  affect 
either  patent,  except  so  far  as  the  patent  affected  is  owned 
by  parties  to  the  suit,  or  by  persons  deriving  title  under 
them  after  the  rendition  of  such  decree.  The  proper  prac- 
tice is  to  make  all  persons  complainants  who  have  a  right, 
and  who  are  willing,  to  be  so  made ;  and  to  make  all  per- 
sons defendants  who  are  liable  to  be  made  so,  and  who  re- 
side in  the  district  where  the  suit  is  brought.  No  person 
who  does  not  reside  in  that  district  can  be  made  a  party 


1  Revised  Statutes,  Section  4904;  3  Leach  v.  Chandler,  18  Fed.  Rep. 

Hubel  v.  Dick,  28  Fed.  Rep.  139,  262,  1883;  Swift  v.  Jenks,  29  Fed. 

1886.  Rep.  642,  1887;  Hollidaj'  v.  Pick- 

1  Revised  Statutes,  Section  4918.  hardt,  29  Fed.  Rep.  853,  1887. 


CHAP.   XIII.]  INTEBFERING    PATENTS.  245 

defendant  to  a  suit  of  this  kind,  any  more  than  to  any  other 
equity  suit  in  a  Federal  court.1 

A  bill  cannot  be  filed  in  an  interference  suit,  until  the 
complainant's  patent  is  actually  granted ; a  and  until  the 
defendant's  patent  is  actually  granted,  there  is  no  occasion 
for  such  a  bill.  No  cross-bill  is  either  necessary  or  proper 
in  a  suit  of  this  kind,  because  the  statute  provides  that  in 
such  a  suit,  the  court  may  adjudge  either  of  the  patents  to 
be  void.  The  defendant  may  therefore  obtain  all  rightful 
affirmative  relief  without  becoming  himself  a  complainant 
in  a  cross-bill.1 

§  317.  There  may  be  an  issue  of  law  in  an  interference 
suit  depending  upon  the  construction  of  the  various  letters 
patent  involved  therein,  and  consisting  of  the  question  of 
the  presence  or  absence  of  interference  between  them  ;  and 
such  an  issue  when  it  arises  in  such  a  suit  may  be  decided 
on  a  demurrer.4  There  is  but  one  issue  of  fact  in  an  inter- 
ference suit.  That  issue  relates  to  the  dates  wherein  the 
interfering  matter  was  respectively  invented  by  the  inter- 
fering inventors.  If  the  complainant's  invention  is  the  older, 
the  defendant's  interfering  claim  is  void  for  want  of  novelty. 
And  the  complainant's  interfering  claim  is  void  for  want  of 
novelty,  if  the  defendant's  invention  is  found  to  antedate  the 
other.  Evidence  that  a  third  person  anticipated  both  in- 
ventors, is  not  admissible  in  an  interference  suit ;  because 
such  evidence  is  not  relevant  to  any  decree  the  court  has 
jurisdiction  to  make  in  such  a  case.  Such  evidence,  if  acted 
upon,  would  result  in  a  decree  voiding  both  patents.  The 
statute  authorizes  a  decree  voiding  either  patent,  but  au- 
thorizes none  voiding  both.  A  decree  voiding  one,  is  not  a 
decree  impliedly  validating  the  other.  Such  a  decree  leaves 
the  successful  patent  open  to  every  possible  objection  save 
want  of  novelty  ;  and  leaves  it  open  to  every  possible  objec- 

1  24  Statutes  at  Large,  Ch.  373,  p.  3  Lockwood  ».  Cleveland,  6  Fed. 

552  ;  Liggett  &  Myers  Tobacco  Co.  Rep.  721,  1884. 

v.  Miller,  1  McCrary,  31,  1880.  4  Morris  «.  Mfg.  Co.  20  Fed.  Rep. 

*  Hoeltge  v.  Hoeller,  2  Bond,  388,  121,  1884. 
1870. 


246  INTERFERING   PATENTS.  [CHAP.  XIH. 

tion  of  want  of  novelty,  save  such  as  might  otherwise  have 
been  based  on  the  existence  of  the  unsuccessful  patent ;  and 
leaves  it  open  also  to  that  objection,  as  between  all  persons, 
except  the  parties  to  the  interference  suit  and  their  privies. 
If  a  defendant  in  an  interference  suit  may  attack  the  com- 
plainant's patent  on  the  ground  that  a  third  person  antic- 
ipated the  complainant's  invention,  he  may,  with  equal 
propriety  attack  it  on  any  or  all  of  the  numerous  other 
grounds  upon  which  patents  may  be  attacked  in  point  of 
validity.  To  suppose  that  the  statute  of  interference  suits 
authorizes  any  such  extended  litigation,  is  apparently  to 
misapprehend  its  purpose  and  misconstrue  its  language. 
These  views  are  now  sufficiently  established,1  notwithstand- 
ing one  district  judge  has  decided  the  point  in  the  opposite 
direction.* 

§  318.  The  evidence  upon  which  interference  suits  are  de- 
cided, consists  of  the  best  evidence  on  the  question  in  issue. 
On  this  question  the  Commissioner's  decision  is  primafacie 
evidence  in  favor  of  the  patent  last  granted ;  because  he 
would  not  have  granted  it  if  he  had  not  decided  it  to  be  en- 
titled to  priority  in  point  of  date  of  invention.3  The  Com- 
missioner's decision  is  not  conclusive  ;  because,  if  it  were, 
the  court  would  have  no  function  but  to  enforce  that  deci- 
sion ;  and  because,  if  it  were  conclusive  in  law,  it  would  bind 
nobody  but  the  senior  patentee.  In  such  a  case  the  opera- 
tion of  a  decree  based  on  a  Commissioner's  decision,  if 
wrong  in  fact,  would  be  to  deprive  a  patentee  of  all  right  to 
make,  use  or  sell  the  thing  which  he  was  the  first  to  invent 
and  the  first  to  patent ;  and  to  throw  that  invention  open  to 
the  residue  of  the  world.4 

The  law  of  evidence,  if  applicable  to  depositions  taken  in 
a  Patent  Office  interference,  would  make  those  depositions 

1  Pentlarge  t>.  Peutlarge,  19  Fed.  3  Wire  Book  Sewing  Machine  Co. 

Rep.  817,  1884;  Lockwood  v.  Cleve-  v.  Stevenson,  11  Fed.  Rep.  155, 1882; 

land,  20  Fed.  Rep.  164, 1884;  Ameri-  Chicopee  Folding  Box  Co.  «.  Rogers, 

can  Clay  Bird  Co.  v.  Clay  Pigeon  32  Fed.  Rep.  695,  1887. 

Co.  31  Fed.  Rep.  467,  1887.  4  Union  Paper  Bag  Machine  Co.  t>. 

9  Foster  v.  Lindsay,  3  Dillon,  126,  Crane,  1  Holmes,  429,  1874. 
1875. 


CHAP.   XIII.]  INTERFERING   PATENTS.  247 

admissible  in  a  subsequent  interference  suit  between  the 
same  parties  on  the  same  question  of  priority.1  But  Judge 
SHIRAS  has  held  that  such  depositions  are  not  thus  admis- 
sible, where  there  is  no  insuperable  obstacle  to  retaking  the 
testimony  of  the  deponents.* 

§  319.  Injunctions  are  not  expressly  authorized  by  the 
statute  which  provides  for  interference  suits.  Justice  NEL- 
SON once  decided  that  a  preliminary  injunction  could  be 
granted  in  such  a  case  on  the  ground  that  "  the  power  con- 
ferred upon  the  Circuit  Court  to  entertain  bills  in  equity,  in 
controversies  arising  under  the  Patent  Act,  is  a  general 
equity  power,  and  carries  with  it  all  the  incidents  belonging 
to  that  species  of  jurisdiction."  :  Justice  BLATCHFORD  was 
of  counsel  for  defendant  in  that  case,  and  was  its  reporter ; 
but  when  he  came  to  the  bench  he  declined  to  follow  the 
precedent,  saying :  "  I  am  not  aware  of  any  principle  which 
would  authorize  the  Court,  in  a  suit  of  this  character,  to 
restrain  a  defendant  from  bringing  suits  on  his  patent,  be- 
fore that  patent  is  adjudged  to  be  invalid."4  Of  course 
Justice  BLATCHFORD  was  aware  of  what  Justice  NELSON  had 
decided.  He  must  therefore  have  held  that  the  reason 
Justice  NELSON  gave  was  not  a  good  one ;  unless  there  is  a 
substantial  difference  between  the  forms  of  injunction  asked 
for  in  the  two  cases.  The  injunction  prayed  before  Justice 
NELSON  was  that  the  defendant  be  restrained  from  using  or 
selling  his  interfering  patent ;  and  the  injunction  prayed  in 
the  other  case  was  that  the  defendant  be  restrained  from 
bringing  suits  upon  his  interfering  patent.  In  both  cases 
the  thing  sought  to  be  enjoined  was  an  attempted  enjoy- 
ment of  the  patented  right.  The  two  decisions  seem  there- 
fore to  be  in  conflict,  and  the  law  upon  the  point  cannot  be 
said  to  be  settled. 

§  320.  The  hearing  of  an  interference  case  may  disclose 


1  1  Greenleaf  on  Evidence,  Section  •  Potter  v.  Dixon,  5  Blatch.  165, 

553.  1863. 

*  Clow  t>.  Baker,  36  Fed.  Rep.  4  Asbestos  Felting  Co.  v.  Salaman- 

692,  1888.  der  Felting  Co.  13  Blatch.  454, 1876. 


248  INTERFERING    PATENTS.  [CHAP.   XIII. 

that  there  is  no  interference  between  the  patents  before  the 
court ;  or  that  there  is  such  an  interference.  In  the  former 
event,  the  proper  decree  to  enter  is  one  dismissing  the  com- 
plainant's bill ;  and  in  the  latter  event,  the  proper  decree  is 
one  adjudging  the  patent  issued  on  the  later  of  the  inven- 
tions, to  be  void,  so  far  as  it  secures  the  interfering  matter, 
and  so  far  as  the  title  of  the  parties  to  the  suit  extends.1 
Such  a  decree  should  be  entered  regardless  of  whether  the 
patent  to  be  voided  is  that  of  the  defendant  or  that  of  the 
complainant.  If  it  is  the  latter,  a  decree  merely  dismissing 
the  complainant's  bill  will  not  answer  the  purpose ;  because 
such  a  decree  does  not  necessarily  involve  any  such  con- 
clusion.2 It  may  mean  only  that  there  is  no  interference ; 
or  it  may  merely  mean  that  the  complainant  has  no  proper 
title  to  the  patent  which  he  invokes. 

1  Gilmore  v.  Golay,  3  Fisher,  522,          2  Tyler  v.  Hyde,  2  Blatch.   310, 
1869;    Sturges   v.    Van   Hagen,    6      1851. 
Fisher,  572,  1873. 


CHAPTER  XIV. 


REPEAL  OF  PATENTS. 


321.  Patents  obtained  by  fraud,  or 
granted  by  mistake. 

322.  Jurisdiction  of  equity  to  repeal 


patents  so  obtained  or  so  grant- 
ed. 
323.  Practice  in  such  cases. 


§  321.  PATENTS  and  reissues  may  sometimes  be  obtained 
by  fraud  ;  and  sometimes  be  granted  by  mistake.  The  facts 
which  constitute  the  fraud,  or  which  make  the  granting  a 
mistaken  one,  may  generally  be  interposed  as  one  of  the 
defences  to  an  infringement  suit ;  but  where  those  facts  are 
such  that  no  one  of  those  defences  can  be  based  upon  them, 
they  cannot  be  interposed  merely  because  they  constitute  a 
fraud,1  or  constitute  a  mistake.2  Nor  can  any  individual 
bring  any  action  to  repeal  or  otherwise  set  aside  a  patent, 
on  any  ground  of  fraud  ;  or  indeed  on  any  ground  whatever, 
except  that  of  an  interference.3  Where  frauds  are  ingenious 
enough  to  keep  clear  of  all  known  defences  to  infringement 
suits,  the  wrongs  which  they  cause  are  without  a  remedy, 
unless  the  United  States  Courts  will  repeal  a  patent  which 
United  States  officers  have  fraudulently  been  induced  to 
grant,  or  to  reissue.  So  also,  where  a  patent  is  granted  by 
mistake,  instead  of  being  refused,  as  it  ought ;  and  where 
the  ground  of  refusal  does  not  constitute  ground  of  defence 
to  a  suit  for  infringement ;  the  wrongs  which  such  a  mis- 
take will  occasion  must  be  remedied  by  a  repeal  of  the 
patent,  or  they  are  remediless. 

§  322.  Equity  has  jurisdiction  to  repeal  letters  patent  for 
inventions  where  they  were  obtained  by  fraud,  whenever 

1  Railroad  Co.  «.  Duboise,  12  Wai-      1869. 

lace,  64,  1870.  3  Mowry  ®.  Whitney,  14  Wallace, 

*  Doughty  v.  West,  6  Blatch.  433,      439,  1871. 

249 


250    •  REPEAL  OF  PATENTS.          [CHAP.  XIV. 

the  United  States  files  a  bill  stating  the  facts  and  praying 
that  the  letters  may  be  annulled ; i  and  the  same  jurisdic- 
tion probably  exists  where  such  letters  patent  are  issued  by 
mistake. 

§  323.  A  bill  to  repeal  a  patent  must  be  filed  by  the  United 
States  ; "  acting  through  the  United  States  district  attorney 
of  the  district  wherein  it  is  filed  ; 3  and  he  acts  under  the  direc- 
tion of  the  Attorney  General  of  the  United  States  ; 4  and  it 
must  be  filed  in  the  Circuit  Court  of  the  United  States  for 
that  district ; 5  and  be  filed  before  the  expiration  of  the 
patent  which  it  seeks  to  repeal.'  No  citizen  has  any  power 
to  compel  the  United  States  or  the  district  attorney  to  file 
such  a  bill ;  or  to  control  its  prosecution  after  such  a  bill  is 
filed.7  The  mere  pendency  of  a  bill  to  repeal  a  patent  will 
not  affect  the  progress  of  an  infringement  suit  based  on  that 
patent ; "  and  no  injunction  will  issue  to  restrain  a  patentee 
from  bringing  infringement  suits,  pending  a  bill  in  equity  to 
repeal  the  patent  upon  which  he  proposes  to  bring  them.' 

1  United  States  v.  Bell  Telephone  6  Bourne  ®.  Goodyear,  9  Wallace, 
Co.  128  U.  S.  373,  1888.  811,  1869. 

2  Mowry  v.  Whitney,  14  Wallace,  7  New  York  &  Baltimore  Coffee 
440,  1871.  Polishing  Co.  n.  New  York  Coffee 

3  Attorney-General    «.    Rumford  Polishing  Co.  9  Fed.  Rep.  580, 1881. 
Chemical  Works,  2  Bann.  &  Ard.  *  American  Bell  Telephone  Co.  v. 
808,  1876.  National    Telephone    Co.   27    Fed. 

4  United  States  v.  Bell  Telephone  Rep.  666,  1886. 

Co.  128  U.  S.  350,  1888.  9  United  States  v.  Colgate,  21  Fed. 

5  Revised  Statutes,   Section  629,      Rep.  318,  1884. 
p.  9. 


CHAPTEE  XV. 


QUI  TAM  ACTIONS. 


324.  Qui  tarn  actions,  defined  and 
described  as  they  exist  in  the 
patent  laws. 

325.  The    wrongs    which    are    the 
foundations  of  such  actions. 

,326.  The  first  two  of  those  three 
classes  of  wrongs. 

327.  The  third  of  those  three  classes 
of  wrongs. 

328.  Wrongs  of  either  class  are  com- 
pleted when    the  articles   are 
illegally  marked,  without  any 
subsequent  using  or  selling. 


329.  The  amount  of  the  recoverable 
penalty. 

330.  The  parties  in  qui  tarn  patent 
cases. 

331.  The  forum  for  qui  tarn  patent 
actions. 

332.  The  form  of  the  suit,  and  the 
requisites  of  a  declaration,  in 
such  an  action. 

333.  Injunctions  to  restrain  the  com- 
mission of  wrongs  of  either  of 
the  first  two  classes. 

334.  Appeals  in  qui  tarn  patent  cases. 


§  324.  THESE  are  certain  actions  at  law,  which  derive 
their  name  from  the  Latin  words  qui  tarn,  used  at  the  be- 
ginning of  the  declaration  in  such  an  action,  in  times  when 
all  declarations  were  written  in  the  Latin  language.  No 
such  action  was  known  to  the  common  law  of  England  ;  but 
several  actions  of  the  kind  have  long  been  prescribed  by 
statute,  in  that  country,  and  in  this.  Qui  tarn  actions  rele- 
vant to  patents  are  authorized  by  Section  4901  of  the  Re- 
vised Statutes.  That  statute  forbids  certain  classes  of  acts  ; 
and  provides  that  whoever  commits  an  act  of  either  of  those 
classes,  shall  be  liable  to  a  penalty  of  not  less  than  one 
hundred  dollars,  with  costs ;  and  that  any  person  may  sue 
for  that  penalty,  in  any  District  Court  of  the  United  States 
within  whose  jurisdiction  the  offence  was  committed ;  and 
that  one  half  of  the  penalty,  when  recovered,  shall  go  to  the 
plaintiff,  and  the  other  half  to  the  United  States. 

§  325.  The  forbidden  acts  are :  1.  Unauthorized  mark- 
ing, upon  any  patented  article,  of  the  name,  or  any  imita- 
tion of  the  name,  of  the  patentee.  2.  Unauthorized  mark- 

251 


252  QUI   TAM  ACTIONS.  [CHAP.  XV. 

ing,  upon  any  patented  article,  of  the  word  "  patent"  or 
"patentee,"  or  the  words  "letters  patent,"  or  any  word  of 
like  import,  with  intent  to  imitate  or  counterfeit  the  mark 
or  device  of  the  patentee.  3.  Marking  upon  any  unpatented 
article  the  word  "  patent,"  or  any  word  importing  that  the 
same  is  patented,  for  the  purpose  of  deceiving  the  public. 

§  326.  The  first  two  of  these  three  classes  of  acts  are  in- 
jurious to  the  public,  and  to  the  patentees.  They  are  in- 
jurious to  the  public  in  that  they  are  adapted  to  mislead 
persons  into  buying  and  using  articles  which  were  made 
and  sold  in  violation  of  patents,  and  which  therefore  can- 
not be  lawfully  used  even  by  innocent  purchasers.  The 
law  provides  that  those  who  have  a  right  to  make  and  sell 
patented  articles  shall  mark  those  articles  with  the  word 
"•  patented ;"  '  and  that  other  persons  shall  not  so  mark  such 
articles."  When  buying  anything  which  is  not  so  marked, 
a  purchaser  properly  concludes  that  it  is  not  patented,  and 
that  he  may  therefore  use  it  without  risk  of  a  suit  for  in- 
fringement ;  and  when  buying  anything  that  is  so  marked, 
the  purchaser  concludes,  with  equal  propriety,  that  it  was 
made  and  sold  by  the  patentee  or  some  one  lawfully  author- 
ized by  him,  "and  that  therefore  it  may  be  lawfully  used  to 
any  extent  desired.  It  is  clear,  that  on  these  accounts,  the 
first  two  of  the  forbidden  acts  are  detrimental  to  public 
security,  and  therefore  opposed  to  public  policy.  The 
same  acts  are  also  injurious  to  patentees,  and  they  will  be 
considered  in  that  aspect  in  a  subsequent  section. 

§  327.  The  last  of  the  three  forbidden  classes  of  acts  is 
injurious  to  the  public,  in  that  it  is  adapted  to  mislead  per- 
sons into  an  opinion  that  they  have  no  right  to  make  and 
use,  or  make  and  sell,  other  specimens  of  the  thing  marked 
as  being  patented.  When  an  unpatented  thing  is  so  marked, 
it  is  immaterial  whether  it  is  a  pateiitable  thing  or  not.3 
This  point  is  so  clear  that  it  would  not  be  thought  to  re- 


1  Revised  Statutes,  Section  4900.         Mills    Co.    5    Sawyer,    120,    18?*; 

2  Revised  Statutes,  Section  4901.         Winne  v.  Snow,  19  Fed.  Rep.  509, 

3  Olipbant    v.     Salem    Flouring      1884. 


CHAP.  XV.]  QUI  TAM   ACTIONS.  253 

quire  or  admit  elaboration,  had  not  a  judge  in  one  case  ex- 
pressed a  contrary  opinion.1  Whether  a  thing  is  patentable 
or  not  depends  on  considerations  of  which  the  public  as  a 
whole  are  necessarily  ignorant.  They  may  therefore  be  de- 
ceived by  seeing  the  word  "  patented"  upon  an  unpatent- 
able  unpatented  article,  as  readily  as  by  seeing  the  same 
word  upon  a  patentable  unpatented  article.  That  word 
warns  them  not  to  copy  that  article.  They  are  as  reluc- 
tant to  disregard  that  warning  on  a  supposition  that  the 
article  is  not  patentable,  as  they  are  on  the  hypothesis  that 
it  is  not  patented ;  and  they  are  as  effectually  diverted 
from  exercising  their  right  to  copy  it  in  the  one  case  as  in 
the  other. 

Intent  to  deceive  the  public  is  a  necessary  element  of  the 
forbidden  act  now  under  consideration ;  and  that  intent 
does  not  exist  when  the  person  marking,  is  himself  mis- 
taken relevant  to  his  right  so  to  mark ; "  or  where  the  word 
"  patented"  is  accompanied  by  other  words  or  characters 
which  indicate  that  the  article  was  once  the  subject  of  a 
patent,  but  that  the  patent  has  expired  at  the  time  of  the 
marking.3  Inasmuch  as  all  persons  are  presumed  to  intend 
the  natural  consequences  of  their  acts,  proof  of  an  act  which 
was  adapted  to  deceive  the  public,  is  sufficient  proof  of  the 
intent  to  deceive,  unless  the  doer  establishes  his  innocence 
of  that  intent.  The  burden  of  proof  therefore  lies  upon  the 
defendant,  in  this  particular.4  That  burden  can  be  carried 
by  showing  that  the  person  marking,  honestly  believed  that 
the  thing  marked  was  really  patented  by  a  particular  patent ; 
but  it  cannot  be  carried  by  showing  that  the  person  mark- 
ing did  not  know  whether  the  article  marked  was  patented 
or  not;  and  the  question  whether  a  particular  thing 
marked  patented  is  really  patented  by  a  particular  patent 
is  a  question  of  construction  for  the  Court.5 

1  United  States  v.  Morris,  2  Bond,  57,  1882 

27,  1866.  4  Brig  Struggle  v.  United  States, 

4  Walker  t.  Hawxhurst,  5  Blatch.  9  Cranch,  74,  1815. 

494  1867.  '  Tompkins  t>.  Butterfleld,  25  Fed. 

3  Wilson  «.  Mfg.  Co.  12  Fed.  Rep.  Rep.  556,  1885. 


254  QUI  TAM   ACTIONS.  [CHAP.  XV. 

§  328.  Proof  that  the  article  illegally  marked  patented 
was  afterward  sold,  or  was  otherwise  presented  to  the  notice 
of  the  public,  is  not  a  necessary  element  in  either  of  the 
acts  which  are  forbidden  by  the  statute  ;  but  proof  that  the 
intent  to  deceive  the  public  existed  when  the  marking  was 
done  is  such  an  element.  Accordingly,  if  a  person  illegally 
marks  an  article,  his  offence  is  complete,  and  is  not  con- 
doned by  a  subsequent  omission  to  profit  by  that  offence ; 
but  where  a  person  marks  an  article  without  any  intent  to 
deceive,  and  afterward  uses  the  article  so  marked,  for  pur- 
poses of  deception,  he  does  not  violate  the  statute.1  Where 
a  person  illegally  marks  an  article  in  one  judicial  district 
of  the  United  States  and  offers  it  for  sale  in  another,  he 
violates  the  statute  in  the  former  district  but  not  in  the 
latter.2 

§  329.  The  penalty  prescribed  by  the  statute  for  either  of 
the  forbidden  acts  is  "  not  less  than  one  hundred  dollars  ;" 
and  Justice  CURTIS  well  decided  that  such  language  must, 
in  a  penal  statute  like  this,  be  strictly  construed,  and  that, 
when  so  construed,  it  authorizes  a  penalty  of  precisely  one 
hundred  dollars  and  no  more.*  The  district  judge  in  the 
same  district,  in  a  later  case,  instructed  a  jury  to  assess  the 
"  damages"  not  less  than  one  hundred  dollars  and  as  much 
more  as  they  thought  proper/  That  instruction  was  not 
accompanied  by  any  reasoning  on  the  subject,  and  was 
apparently  made  in  ignorance  of  the  elaborate  contrary  de- 
cision of  Justice  CURTIS.  The  latter  decision  may  therefore 
safely  be  said  to  embody  the  law  on  this  point. 

§  330.  The  plaintiff  in  a  qui  tarn  action  for  illegally  mark- 
ing a  patented  or  unpatented  article,  may  be  any  "  person,"  ' 
whether  he  was  injured  by  the  doings  of  the  defendant  or 
not.8  It  was  decided  under  a  similar  statute  relevant  to 


1  Nichols  v.  Newell,  1  Fisher,  647,  4  Nichols  v.  Newell,  1  Fisher,  659, 

1853.  1853. 

8  Pentlarge  v.  Kirby,  19  Fed.  Rep.  5  Revised  Statutes,  Section  4901. 

504, 1884.  «  Winne  t>.  Snow,  19  Fed.   Rep. 

3  Stimpson  e.  Pond,  2  Curtis,  502,  508,  1884. 
1855. 


CHAP.  XV.]  QUI  TAM   ACTIONS.  255 

copyrights,  that  a  plurality  of  persons  could  not  join  as 
plaintiffs  in  an  action  of  the  kind.'  The  language  of  that 
copyright  statute  was  identical  with  that  of  the  present 
patent  statute  in  this  particular ;  and  the  same  good  rea- 
soning which  carried  the  court  to  its  conclusion  in  the  copy- 
right case,  will  probably  carry  any  court  to  the  same  con- 
clusion in  any  qui  tarn  action  under  the  patent  statute.  The 
person  who  sues  must  be  a  natural  and  not  an  artificial 
person  ;  and  he  must  sue  in  his  own  name  and  not  in  that 
of  the  United  States,2  though  it  is  not  improper  for  him  to 
state  that  he  sues  for  the  United  States,  as  well  as  for  him- 
self.3 

The  defendant  may  be  the  particular  natural  person  who 
did  the  marking  complained  of ;  and  it  has  been  held  in 
one  case  that  the  defendant  may  be  the  corporation  for 
which  that  natural  person  acted,  even  where  he  marked  the 
articles  without  any  directions  so  to  do.4  The  death  of  the 
defendant  will  end  a  qui  tarn  patent  case,  and  will  terminate 
the  right  of  action  on  which  it  is  based.5 

§  331.  Jurisdiction  in  qui  tarn  actions,  unlike  that  in 
other  kinds  of  patent  suits,  is  conferred  upon  District 
Courts,  not  upon  Circuit  Courts,  of  the  United  States,  and 
is  conferred  upon  the  particular  court  within  the  district  of 
which  the  forbidden  act  was  committed." 

§  332.  The  proper  form  of  common  law  action,  in  qui  tarn 
cases,  is  that  of  debt.7  Inasmuch,  however,  as  no  particu- 
lar form  is  prescribed  by  the  Federal  statute,  the  code 
forms  of  complaints  or  petitions  are  to  be  used  in  code 
States.8  The  declaration,  complaint,  or  petition,  as  the 

1  Ferrett  v.  Atwill.  1  Blatch.  153,  «  Revised  Statutes,  Section  4901 ; 
1846.  Winne  v.  Snow,  19  Fed.  Rep.  509, 

2  United  States  v.  Morris,  2  Bond,  1884  ;  Pentlarge  t>.  Kirby,  19  Fed. 
27.  1866.  Rep.  505,  1884. 

8  Winne  v.  Snow,  19  Fed.  Rep.  '  Stimpson  t>.  Pond,  2  Curtis,  505, 
508,1884.  1855;  Jacob  v.  United  States,  1 

4  Tompkins*.  Butterfield,  25  Fed.      Brockenbrough,  520,  1821. 

Rep.  559,  1885.  8  Revised  Statutes,  Sections  721, 

5  Schreiber  v.  Sharpless,  17  Fed.       914. 
Rep.  589,  1883. 


256  QUI  TAM  ACTIONS.  [CHAP.  XV. 

case  may  be,  ought  to  state  all  the  elements  of  the  forbid- 
den act  upon  which  it  is  based ; '  and  to  charge  that  the 
act  was  contrary  to  the  form  of  the  statute  in  such  cases 
made  and  provided.2  It  is  not  enough  to  charge  that  the 
act  was  contrary  to  the  law  in  such  cases  made  and  pro- 
vided,3 but  to  aver  it  to  have  been  contrary  to  the  form  of 
the  statutes  in  such  cases  made  and  provided,  though  inar- 
tistic, is  not  fatal.4  It  is  not  necessary  to  aver  the  uses  to 
which  the  penalty  when  recovered,  is  to  be  applied.5  A 
declaration,  complaint  or  petition  in  a  qui  tarn  patent  case 
is  tested  in  point  of  sufficiency  by  the  rules  applicable  to 
civil  actions  in  the  state  in  which  the  District  Court  is  es- 
tablished when  that  sufficiency  is  drawn  in  question  in  that 
court.8 

§  333.  The  first  two  of  the  classes  of  acts,  forbidden  by 
Section  4901  of  the  Revised  Statutes,  are  not  only  injurious 
to  the  public,  in  the  manner  already  explained ;  but  they 
are  also  injurious  to  the  rightful  patentees.  Such  acts  en- 
able infringers  to  increase  the  amount  of  their  infringe- 
ments, by  inducing  the  public  to  believe  that  the  articles 
they  sell  were  lawfully  made,  and  may  be  lawfully  sold  and 
used.  So  also,  such  acts  may  enable  infringers  to  palm  off 
on  the  public  an  inferior  article,  the  using  of  which  will 
disappoint  the  purchaser,  and  thus  operate  to  injure  the 
reputation  of  the  genuine  thing.  For  these  reasons,  it  has 
been  held  that  a  person  who  is  guilty  of  an  act  of  either  of 
the  first  two  classes,  may  be  restrained  by  an  injunction 
from  any  repetition  of  such  an  act.1 

§  334.  A  writ  of  error  lies  to  the  Circuit  Court  for  the 
same  district,  from  the  final  judgments  of  a  District  Court, 
in  a  qui  tarn  patent  case,  because  such  a  case  is  a  civil  case," 

1  Ferrett ».  Atwill,  1  Blatch.  155,  5  Sears  v.  United  States,  1  Galli- 

1846.  son,  259,  1812. 

*  Sears  v.  United  States,  1  Galli-  6  Fish  v.  Manning,  31  Fed.  Rep. 

son,  259,  1812.  340,  1887. 

8  Smith  v.  United  States,  1  Galli-  '  Washburn  &  Moen  Mfg.  Co.  v. 

son,  264,  1812.  Haish,  4  Bann.  &  Ard.  571,  1879. 

4  Kenrick  v.  United  States,  1  Gal-  8  Jacob  v.  United  States,  1  Brock- 

lison,  273,  1812.  enbrough,  525,  1821. 


CHAP.    XV.]  QUI   TAM    ACTIONS.  257 

and  because  the  matter  in  dispute  in  every  such  case  ex- 
ceeds the  sum  of  fifty  dollars ; '  but  no  such  writ  of  error 
lies  from  the  Circuit  Court  to  the  Supreme  Court,  unless  at 
least  fifty  penalties  can  be  recovered  in  one  action,  and  a 
judgment  for  five  thousand  dollars  thus  be  obtained  ;a  for 
a  qui  tarn  patent  case  is  not  a  case  touching  a  patent  right.* 
Such  actions  are  based  on  pretensions  of  patent  rights, 
where  no  such  right  exists. 

1  Revised  Statutes,  Section  633.          Sec.  3,  p.  316. 
-  Revised  Statutes.  Section  692 ;         3  Revised  Statutes,  Section  699. 
18  Statutes  at  Large,  Part  3,  Ch.  77. 


CHAPTER  XVI. 


INFRINGEMENT. 


835.  Infringement  of  process  pat- 
ents, illustrated  by  the  case  of 
Tilghman  v.  Proctor.  355 

336.  Illustrated  by  the  case  of  Mow- 
ry  v.  Whitney. 

337.  Illustrated  by  the  case  of  Coch- 

rane  v.  Deeuer.  356 

838.  Equivalents  in  processes. 

339.  Infringement    of   patents    for 
machines  or  manufactures.  357. 

340.  Comparative  results. 

341.  The  test  of  comparative  modes 

of  operation.  358. 

342.  Comparative  modes  of    oper- 
ation as  illustrated  by  the  case      359 
of  the  Cawood  patent. 

343.  As  illustrated  by  the  Driven- 
Well  cases.  300 

344.  As  illustrated  by  Blanchard's 
patent    for    turning     irregular      361. 
forms. 

345.  As     illustrated  by    Hayden's      362. 
Brass-Kettle  machine. 

346.  As  illustrated   by  the  case  of      363. 
Burr  v.  Duryee. 

346a.  As  illustrated  by  The  Electric 

Signal  case.  364 

347.  Addition. 

348.  Transposition  of  parts. 

349.  Omission.  365. 

350.  Substitution. 

351.  Equivalents  inquired  into.  366. 
3o2.  The  test  of  sameness  of  func- 
tion. '                                                367. 

353.  The  test  of  substantial  same- 
ness of  way  of  performance. 

354.  Question  of  the  necessity  of  age 
in  equivalents,  stated  and  con- 


considered  in  the  light  of  the 
views  of  Justice  CLIFFORD. 

The  same  question  considered 
in  the  light  of  the  cases  of  Mason 
v.  Graham  and  Clough  v.  Mfg. 
Co. 

The  same  question  considered 
in  the  light  of  sundry  Circuit 
Court  cases. 

The  same  question  considered 
in  the  light  of  the  case  of  Potter 
v.  Stewart. 

Review  of  the  question  consid- 
ered in  the  last  four  sections. 

Primary  and  secondary  inven- 
tions in  respect  of  the  doctrine 
of  equivalents. 

Primary  inventions  considered 
in  this  respect. 

Secondary  inventions  consid- 
ered in  the  same  respect. 

Review  of  the  matters  consid- 
ered in  the  last  three  sections. 

Changes  of  form  considered  in 
respect  of  questions  of  infringe- 
ment. 

Subject  of  the  last  section  illus- 
trated by  the  case  of  Strobridge 
v.  Lindsay. 

Illustrated  by  the  case  of  Ives 
v.  Hamilton. 

Illustrated  by  the  case  of  Morey 
f.  Lockwood. 

Illustrated  by  the  case  of  the 
American  Dianiond  Rock  Bor- 
ing Co.  v.  The  Sullivan  Machine 
Co. 

258 


CHAP.    XVI.] 


INFRINGEMENT. 


259 


368.  Illustrated  by  the  case  of  Eliza- 
beth v.  Pavement  Co. 

369.  Infringement    of  patents    for 
compositions  of  matter. 

370.  Substitution  of  ingredients. 

371.  Substitution  of   ingredients  as 
illustrated  by  the  Giant- Powder 
cases. 

372.  Disclaimers  of  particular  equiv- 
alents. 


373.  Changes  of  the  proportions  in 
compositions  of  matter. 

374.  The  various  classes  of  composi- 
tions of  matter. 

375.  Infringement  of  patents  for  de- 
signs. 

376.  Comparative  utility  not  a  cri- 
terion of  infringement. 

377.  Knowledge  of  a  patent  n6t  a 
necessary    element    in    its    in- 
fringement. 

§  335.  A  PATENT  for  a  process  is  infringed  by  him,  who, 
without  ownership  or  license,  uses  substantially  the  process 
which  the  patent  claims  ;  whether  or  not  he  uses  substantial- 
ly the  apparatus  which  the  patent  describes.1  Infringement 
of  a  process  patent  may  occur  even  where  precise  identity 
does  not  exist  in  respect  of  the  process  claimed  by  the  pat- 
ent, and  that  used  by  the  infringer.  In  the  leading  case 
just  cited,  the  apparatus  used  by  the  infringer  was  totally 
unlike  that  described  by  the  patent ;  and  the  process  used 
by  the  infringer  differed  from  the  patented  process  in  several 
particulars.  The  claim  of  the  patent  was  :  "  The  manufac- 
turing of  fat  acids  and  glycerine  from  fatty  bodies  by  the 
action  of  water  at  a  high  temperature  and  pressure."  The 
description  of  the  process  which  was  contained  in  the 
specification  of  the  patent,  stated  that  the  water  should  be 
mixed  with  the  fatty  body  in  the  proportion  of  two  or  three 
parts  of  fat,  to  one  of  water  ;  and  that  the  mixture  should 
be  heated  to  about  612°  Fahrenheit ;  and  should  be  sub- 
jected to  a  pressure  sufficient  to  prevent  the  heat  from  con- 
verting the  water  into  steam. 

The  infringer  mixed  from  four  to  seven  per  cent  of  lime 
with  the  water  and  the  fat ;  and  heated  the  mixture  to  only 
about  310°  Fahrenheit ;  and  subjected  it  to  a  pressure  cor- 
respondingly lower  than  what  would  have  been  necessary 
to  prevent  the  conversion  of  the  water  into  steam,  if  he  had 
used  the  higher  degree  of  heat.  So  also,  he  heated  his 
mixture  by  means  of  superheated  steam  introduced  into  the 


1  Tilghman  v.  Proctor,  102  U.  S.  730,  1880. 


260  INFRINGEMENT.  [CHAP.  XVI. 

vessel  containing  it,  instead  of  applying  heat  to  the  outside 
of  the  vessel ;  and  he  maintained  the  intimacy  of  tfie  mix- 
ture by  continuously  pumping  the  water  from  the  bottom  to 
the  top  of  the  mingled  mass,  instead  of  continuously  forcing 
the  mixture  through  a  coil  of  tubes.  Notwithstanding  all 
these  differences,  the  Supreme  Court  held  the  defendant's 
process  to  substantially  include  that  of  the  patent,  and 
therefore  to  be  an  infringement  of  the  latter.  This  holding 
was  not  inconsistent  with  the  opinion  that  the  addition  of 
the  lime  to  the  mixture,  was  a  useful  addition  to  the  patented 
process,  nor  with  the  possibility  that  the  defendant's 
method  of  maintaining  the  intimacy  of  the  mixture,  was 
superior  to  that  of  the  patent,  nor  with  the  probability  that 
the  heating  by  the  introduction  of  superheated  steam,  was 
more  perfect  than  by  conducting  the  heat  into  the  mixture 
through  the  walls  of  the  inclosing  vessel,  nor  with  the  fact 
that  the  lower  degree  of  heat  and  of  pressure  used  by  the 
defendant  was  "more  safe,  and  perhaps  more  economical, 
than  the  higher  degree  of  each,  which  was  suggested  in  the 
patent. 

§  336.  Similar  circumstances  characterized  the  question 
of  infringement  in  the  case  of  Mo  wry  v.  Whitney.1  The 
patent  in  that  case  covered  a  process,  which  consisted  in 
taking  cast  iron  car-wheels  from  their  moulds  as  soon  as 
they  become  solid  enough  to  retain  their  shape  ;  and  in  im- 
mediately placing  the  wheels  in  a  furnace  or  chamber, 
previously  heated  to  about  the  temperature  of  the  wheels 
when  taken  from  the  moulds ;  and  in  thereupon  reheating 
those  wheels ;  and  then  in  causing  them  to  finally  cool  with 
a  great  degree  of  slowness. 

The  infringer's  process  consisted  in  taking  the  wheels  red 
hot  from  the  moulds ;  and  in  thereupon  putting  them  in  an 
unheated  chamber,  interlaying  them  with  charcoal,  and 
covering  the  whole  with  a  perforated  metal  plate ;  and  in 
then  causing  the  charcoal  to  burn  so  as  to  reheat  the 
wheels  to  a  somewhat  indefinitely  high  temperature ;  and 

1  Mowry  t>.  Whitney,  14  Wallace,  620,  1871. 


CHAP.  XVI.]  INFRINGEMENT.  2G1 

in  so  adjusting  the  draft,  as  to  make  the  charcoal  burn  out 
and  tne  wheels  to  consequently  cool  down,  with  a  great 
degree  of  slowness.  The  Supreme  Court  found  all  of  the 
steps  of  the  complainant's  process  in  the  defendant's  do- 
ings, though  confessedly  the  reheating  was  done  by  dif- 
ferent means,  and  the  slow  cooling  regulated  on  different 
principles,  from  those  which  caused  and  controlled  the  cor- 
responding parts  of  the  complainant's  process. 

§  337.  The  case  of  Cochrane  v.  Deener '  involved  the  in- 
fringement of  a  patent  for  a  process  of  winnowing  im- 
purities out  of  ground  wheat,  while  the  flour  is  being  sep- 
arated from  the  other  parts  of  the  meal  by  means  of  fine 
cloth  sieves,  commonly  called  "bolts."  The  patent  de- 
scribed a  suitable  apparatus  by  means  of  which  to  practise 
this  process.  It  consisted  of  a  series  of  cylindrical  sieves, 
covered  with  cloth  of  progressively  finer  meshes,  and  hav- 
ing within  them  a  series  of  air  pipes,  so  disposed  that  when 
the  ground  wheat  was  in  the  sieves,  and  the  sieves  were  re- 
volving, air  blasts  were  blown  from  the  ends  of  those  pipes, 
into  and  among  the  particles  of  ground  wheat.  Those  air 
blasts  operated  to  blow  the  impurities  through  the  opening 
in  the  top  of  the  bolting  chamber,  at  the  same  time  that  the 
revolutions  of  the  sieves  operated  to  separate  the  flour  from 
the  middlings.  The  result  of  the  whole  operation  was  to 
separate  the  ground  wheat  into  three  sorts  of  matter,  and 
to  place  those  three  sorts  in  three  different  receptacles. 

The  defendant  accomplished  the  same  result,  by  winnow- 
ing the  impurities  out  of  the  ground  wheat,  while  the  flour 
was  being  separated  from  the  other  parts  of  the  meal,  by 
means  of  fine  cloth  sieves.  But  the  defendant's  sieves  were 
flat,  and  the  air  blasts  were  blown  through  those  sieves 
from  below  and  reached  the  impurities  through  the  cloth, 
instead  of  reaching  them  from  the  ends  of  pipes  located  on 
the  same  side  of  the  cloth,  as  that  occupied  by  the  ground 
wheat.  The  Supreme  Court,  however,  held  that  process  to 

1  Cochrane  v.  Deener,  94  U.    S.  787,  1876. 


262  INFRINGEMENT.  [CHAP.  XVI. 

infringe  the  complainant's  patent,  notwithstanding  these 
differences. 

§  338.  No  process  patent  is  infringed  where  any  one  of 
the  series  of  acts  which  constitute  the  process  is  omitted 
by  the  supposed  infringer,  unless  some  equivalent  act  is 
substituted  for  the  one  omitted.1  Precisely  what  consti- 
tutes equivalency,  as  between  acts,  has  never  been  decided 
or  stated  by  the  Supreme  Court.  Reason  seems  to  indicate 
that  one  act  is  the  equivalent  of  another  when  it  works  in 
substantially  the  same  way  to  accomplish  the  same  result. 
Accordingly,  it  has  been  held  that  tamping  oil  wells  with 
benzine,  is  equivalent  to  tamping  them  with  water  in  respect 
of  the  series  of  acts  which  constitute  the  process  covered 
by  the  Roberts  torpedo  patent* 

§  339.  Machines  and  manufactures  may  well  be  treated 
together  in  respect  of  infringement,  because  no  exact  line 
can  be  drawn  between  them,  and  because  the  same  rules  of 
infringement  are  applicable  to  both  those  classes  of  tangible 
things.  A  patent  for  a  machine  or  manufacture  is  infringed 
by  him  who,  without  ownership  or  license,  makes,  or  uses, 
or  sells  any  specimen  of  the  thing  covered  by  any  claim  of 
that  patent.  It  is  not  an  infringement  of  a  patent,  to  make, 
use,  or  sell  any  specimen  of  any  invention  described  but 
not  claimed  therein  ; 3  because  a  patent  covers  only  what  it 
claims.  But  whoever  infringes  any  one  claim  of  a  patent 
infringes  the  patent,  whether  or  not  it  contains  other  claims 
which  he  does  not  infringe.4 


1  Dittmar  v.  Rix,  1  Fed.  Rep.  342,  4  Moody  v.  Fiske,  2  Mason,  115, 
1880 ;  Hammerschlag  v.  Garrett,  10  1820;  Wyeth  v.  Stone,  1  Story,  273, 
Fed.  Rep.  479,  1882 ;  Cotter  v.  Cop-  1840 ;  Pitts  v.  Whitman,   2  Story, 
per  Co.  13  Fed.   Rep.   234,   1882;  609, 1843;  Colt  ».  Arms  Co.  1  Fisher, 
Arnold  ».  Phelps,  20  Fed.  Rep.  315,  108,  1851;  Pitts  «.  Wemple.  2  Fisher, 
1884.  10,  1855  ;  Foss  v.  Herbert,  1  Bissell. 

2  Roberts  «.  Roter,  5  Fisher,  296,  121, 1856;  Morris  v.  Barrett,  1  Bond, 
1872.  254,  1859;    Singer  c.  Walmsley,  1 

3  Howe  t>.  Williams,  2  Clif.  262,  Fisher,  558,  1860 ;  McComb  v.  Bro- 
1863;  Waterbury  Brass  Co.  c.  Miller,  die,  1  Woods.  153. 1871;  McComb  ». 
9  Blatch.  93,  1871;  Toohey  «.  Hard-  Ernest,  1  Wocds,  195,  1871. 

ing, 4  Hughes,  253,  1880. 


CHAP.  XVI.]  INFRINGEMENT.  263 

Whether  a  particular  thing  made  or  used  or  sold  by  a 
particular  person,  infringes  a  particular  claim  of  a  par- 
ticular patent,  is  always  a  question  of  fact.  In  some  cases 
that  question  can  readily  be  decided  by  the  application  of 
one  rule  of  law,  and  sometimes  by  the  application  of  an- 
other, and  sometimes  it  can  be  decided  only  by  the  judicial 
sagacity  of  the  tribunal  before  wl\ich  the  question  is  tried. 
Such  relevant  rules  of  law  as  are  well  established,  will  now 
be  stated,  and,  as  far  as  necessary,  will  be  illustrated  by 
describing  the  leading  cases  which  embody  them. 

§  340.  The  respective  results  of  a  machine  or  manufac- 
ture covered  by  the  claim  of  a  patent,  and  of  a  machine  or 
manufacture  alleged  to  infringe  that  claim,  do  not  furnish  a 
criterion  by  which  to  decide  the  question  of  infringement. 
Those  results  may  be  identical,  while  the  things  which  pro- 
duce them  are  substantially  different.  Any  person  may 
accomplish  the  result  performed  by  a  patented  thing  with- 
out infringing  the  patent,  if  he  uses  means  substantially 
different  from  those  of  the  patent.1  To  hold  the  contrary 
of  this  rule  would  be  to  retard,  and  not  to  promote  the 
progess  of  the  useful  arts.3  So  also,  on  the  other  hand, 
the  respective  results  of  patented  and  alleged  infringing 
machines  or  manufactures  may  be  entirely  different  without 
causing  the  latter  to  escape  the  charge  of  infringement,  even 
when  that  charge  is  based  on  unlicensed  using.  This  rule 
results  from  the  well-established  point  of  law  that  it  is  an 
infringement  of  a  patent  to  use  any  machine  or  manufacture 
claimed  therein,  though  such  use  is  for  a  purpose  which  is 
not  mentioned  in  the  patent.3 

§  341.  Mode  of  operation  is  a  criterion  of  infringement  on 
one  side  of  that  question,  but  not  on  the  other.  If  the  mode 

1  O'Reilly  v.  Morse,  15  Howard,  1865  ;  McComb  v.  Brodie,  1  Woods, 
62,  1853  ;   Steam  Gauge  &  Lantern  159,  1871 ;  Zinn  v.  Weiss,  7  Fed. 
Co.  0.  Mfg.  Co.  29  Fed.  Rep.  447,  Rep.  916,  1881 ;  Union  Stone  Co.  t>. 
1886.  Allen,  14  Fed.  Rep.  353, 1882  ;  Cin- 

2  Smith  ®.  Downing,  1  Fisher,  84,  cinnati  Ice  Machine  Co.  v.  Brewing 
1850.  Co,  31  Fed.  Rep,  472,  1887. 

3Mabie  v.  Haskell,  2  Clif.   511, 


264  INFRINGEMENT.  [CHAP.   XVI. 

of  operation  of  an  alleged  infringing  thing  is  substantially 
different  from  that  covered  by  the  claim  alleged  to  be  in- 
fringed, it  follows  that  the  charge  of  infringement  must  be 
negatived;1  but  if  the  mode  of  operation  is  substantially 
the  same  it  does  not  follow  that  the  charge  of  infringement 
must  be  affirmed.  In  that  case  the  question  must  be  de- 
cided by  some  additional  criterion.  To  establish  an  in- 
fringement of  a  claim,  the  facts  must  be  subjected  to  several 
successive  tests.  If  the  case  fails  on  either  of  those  tests, 
no  further  inquiry  need  be  made  ;  but  an  infringement  can- 
not be  affirmed  till  all  those  tests  have  been  applied  and 
have  been  withstood.  The  first  of  these  is  that  which  re- 
lates to  identity  of  mode  of  operation.  It  is  therefore  im- 
portant to  know  wherein  this  requisite  identity  consists.  A 
dogmatic  statement  on  that  point  has  probably  never  been 
ventured  by  any  conrt.  The  nature  of  the  question  seems 
not  to  admit  of  an  answer  which  shall  be  at  once  short  and 
sufficient.  The  best  way  to  investigate  the  subject  is  prob- 
ably to  reason  by  analogy  from  precedents ;  and  accordingly 
several  of  the  sections  which  immediately  follow,  are  devoted 
to  an  analysis  of  cases,  with  a  view  to  furnishing  the  inves- 
tigator with  data  for  such  reasoning. 

§  342.  The  Cawood  patent"  covered  a  machine  which 
combined  the  mode  of  operation  of  an  anvil,  with  the  mode 
of  operation  of  a  vise.  A  drawing  of  the  machine  is  printed 
on  page  492  of  1  Wallace.  The  railroad  rail  mended  upon 
it,  was'  supported  by  it  as  by  an  anvil ;  and  at  the  same 
time  was  clasped  by  it  as  by  a  vise.  The  Supreme  Court 
held  that  the  "Michigan  Southern"  machine  did  not  in- 
fringe the  Cawood  patent,  because  while  that  machine  did 
clasp  the  rail  as  a  vise,  it  did  not  support  the  rail  as  an 
anvil.  The  same  tribunal  also  held  that  the  Beebe  and 
Smith  machine  did  not  infringe  the  Cawood  patent,  because 


1  Field  9.  De  Coineau,  116  U.  S.  Cook,  2  Fisher,  149,  1860. 

187,1886;  Yale  Lock  Co.  v.  Sargent,  *  Cawood  Patent,  94  U.  S.  706, 

117U.  S.  378, 1886;  Smith  v.  Down-  1876. 
ing,  1  Fisher,  83,  1850;  Eames  «. 


CHAP.   XVI.]  INFRINGEMENT.  265 

its  mode  of  operation  was  different.  It  both  supported  and 
clasped  the  rail,  but  it  clasped  it  by  holding  it  between  two 
jaws,  which  jaws,  when  in  position,  rested  in  a  V-shaped 
notch  in  the  anvil.  The  exterior  of  the  jaws  were  also 
V-shaped,  in  order  to  fit  the  notch,  and  they  clasped  the  rail 
because  of  their  gravity,  and  not  in  the  manner  of  a  vise. 
They  also  supported  the  rail,  but  in  a  manner  peculiar  to 
themselves,  and  not  in  the  manner  of  an  anvil. 

§  343.  The  driven- well  patent,  reissue  No.  4372,  covers  an 
interesting  invention.  That  invention  is  practised  by  driv- 
ing into  the  ground  a  long  tube  closed  and  pointed  at  its 
lower  end,  and  having  perforations  through  its  sides  just 
above  that  end  ;  and  by  attaching  a  pump  to  its  upper  end ; 
and  by  working  that  pump  whenever  water  is  desired.  The 
mode  of  operation  of  that  well  is  as  follows :  The  working 
of  the  pump  creates  a  vacuum  in  the  tube,  and  that  vacuum 
in  turn  creates  a  vacuum  outside  of  the  tube  in  the  neigh- 
borhood of  its  lower  end,  and  the  latter  vacuum  draws  to 
itself  all  the  water  in  several  millions  of  cubic  feet  of  the 
surrounding  earth. 

The  alleged  infringer  in  one  case,1  followed  the  patent  in 
every  particular  except  that  instead  of  driving  the  tube 
into  the  earth,  or  into  a  hole  previously  made  by  driving 
down  a  rod  smaller  than  the  tube,  he  bored  a  hole  into  the 
earth  with  an  auger  larger  than  the  tube  which  he  placed 
in  the  hole  after  the  auger  was  withdrawn.  This  appar- 
ently slight  change  caused  the  well  to  have  a  substantially 
different  mode  of  operation  from  that  covered  by  the  patent. 
The  pump,  indeed,  created  the  vacuum  in  the  tube  as  before, 
but  that  vacuum  created  no  vacuum  around  the  outside  of  the 
tube,  because  the  space  outside  of  the  lower  end  of  the  tube 
was  in  direct  communication  with  the  external  air,  through 
the  annular  space  which  surrounded  the  tube  throughout 
its  entire  length,  and  which  was  due  to  the  fact  that  the 
tube  was  smaller  than  the  hole  in  which  it  was  placed. 
Because  of  this  difference,  Judge  McCRARY,  with  excellent 

1  Andrews  «.  Long,  12  Fed.  Rep.  871,  1880. 


266  INFRINGEMENT.  [CHAP.  XVI. 

discrimination,  held  that  the  well  of  the  defendant  did  not 
infringe  the  driven-well  reissue. 

§  344.  Blanchard's  patent  for  a  machine  for  turning  and 
cutting  irregular  forms,  consisted  of  a  combination  of  a 
model,  a  guide,  and  a  cutter-wheel.  When  the  machine 
was  in  operation  the  guide  followed  the  irregularities  of  the 
model,  as  the  model  revolved,  and  the  guide  also  caused  the 
cutter  to  follow  the  same  irregular  curves  while  the  rough 
block  was  revolved  under  the  cutting  edges.  Both  model 
and  block  had  a  continuous  lateral  motion,  as  well  as  a  con- 
tinuous rotary  motion,  and  therefore  the  guide  and  the  cutter- 
wheel  proceeded  in  corresponding  spiral  courses.  In  that 
way  the  guide  traversed  all  parts  of  the  surface  of  the 
model,  and  the  cutter-wheel  traversed  all  portions  of  the 
rough  block,  and  thus  reduced  the  latter  to  conformity  with 
the  shape  of  the  model.  An  infringer  in  one  case '  so  com- 
bined the  parts  of  the  machine,  that  the  model  and  rough 
block  both  rotated  by  an  intermittent  motion,  and  moved 
laterally  by  a  rectilinear  reciprocating  motion.  Justice 
GRIER  held  that  this  mode  of  operation  was  substantially 
unchanged  from  that  of  the  patent. 

§  345.  Hayden's  patent  for  a  machine  for  making  brass 
kettles  consisted  of  two  general  divisions.  1.  An  engine 
lathe  with  its  mandrel  to  revolve  the  pulleys  and  the  gear- 
ing, and  having  special  devices  for  the  special  work  in 
hand.  2.  A  furnishing  or  spinning  tool  and  tool  carriage, 
secured  to  the  frame  of  the  lathe,  and  having  special  de- 
vices to  make  it  work  harmoniously  with  the  lathe  in  pro- 
ducing the  kettles  which  the  two  divisions  of  the  machine 
jointly  operated  to  manufacture.  These  two  divisions  were 
operated  by  one  motive  power,  like  a  shaft,  which  might  be 
connected  with  a  water  wheel,  or  with  a  steam  engine,  or 
with  any  other  suitable  source  of  motion. 

The  infringer  in  one  case  *  operated  the  first  division  of 
the  machine  by  one  such  motive  power ;  but  he  operated 


1  Blanchard  v.  Reeves,  1  Fisher,          *  Waterbnry  Brass  Co.  v.  Miller. 
103,  1850.  9  Blatch.  94,  1871. 


CHAP.  XVI.]  INFRINGEMENT.  267 

the  second  division  by  another,  namely  by  the  hand  of  a 
workman  turning  a  crank.  Judge  WOODRUFF  held  that  this 
was  not  such  a  change  of  mode  of  operation  as  amounted  to 
enough  to  negative  infringement. 

§  346.  The  Wells  hat-body  machine  consisted  of  a  revolv- 
ing brush  to  separate  and  throw  fibres  of  fur ;  a  perforated 
vacuum  cone  to  receive  the  fur  on  its  exterior  surface ;  and 
an  intermediate  tunnel,  to  guide  the  fur  from  the  brush  to 
the  cone.  The  patent  which  was  granted  for  that  invention 
was  three  times  surrendered  and  reissued.  The  second  re- 
issue was  involved  in  a  celebrated  Supreme  Court  case.1 
That  reissue  described  the  machine  which  Wells  invented, 
and  it  claimed  the  mode  of  operation,  substantially  as  de- 
scribed, of  forming  bats  (hat  bodies)  of  fur  fibres.  The 
object  of  this  claim  was  to  cover  the  machine  of  Seth 
Boyden,  a  machine  which  had  the  same  general  mode  of 
operation  as  that  of  Wells,  but  which  was  substantially 
different  from  the  latter  in  one  of  its  parts.  This  attempt 
to  base  a  charge  of  infringement  on  sameness  of  "  mode  of 
operation  "  alone,  was  occasioned  by  the  fact,  that  Justice 
CURTIS,  in  delivering  the  opinion  of  the  Supreme  Court  in 
the  case  of  Winans  v.  Denmead,"  had  used  the  phrase  with 
great  frequency.  He  used  it  exactly  twenty  times  in  that 
case ;  and  the  counsel  for  the  Wells  patent,  when  arguing 
the  case  of  Burr  v.  Duryee,  formulated  seven  doctrines 
which  they  stated  were  deducible  from  that  score  of  in- 
stances. Among  those  doctrines,  the  fourth  was  this :  That 
copying  a  mode  of  operation  is  an  infringement.  But  Jus- 
tice GRIER,  who  was  one  of  the  majority  of  the  court  which 
decided  Winans  v.  Denmead,  was  convinced  that  the  latter 
decision  was  erroneous,  or  that  it  did  not  mean  what  it  was 
generally  understood  to  signify,  for  in  Burr  v.  Duryee  he 
delivered  the  unanimous  opinion  of  the  Supreme  Court 
rejecting  the  complainant's  contention  in  terms  bordering 
on  those  of  contempt.  The  case  of  Winans  v.  Denmead 

1  Burr  v.  Duryee,  1  Wallace,  531,  s  Winans  v.  Denmead,  15  Howard, 
1863.  330,  1853. 


268  INFRINGEMENT.  [CHAP.  XVI. 

cannot  therefore  be  fairly  cited  as  an  authority  on  this 
point,  for  if  it  is  not  consistent  with  Burr  v.  Duryee,  it  was 
overruled  by  the  latter,  and  if  it  is  consistent  with  the  latter 
case,  its  expressions  are  likely  at  least  to  mislead  the  reader, 
as  they  misled  the  counsel  for  the  Wells  patent.  Harmoni- 
ously with  its  decision  in  Burr  v.  Duryee,  the  Supreme 
Court  has  ever  since  had  a  positive  tendency  to  disregard 
whatever  is  abstract  and  intangible  in  questions  of  infringe- 
ment, and  to  base  its  conclusions  upon  the  concrete  features 
of  the  issues  at  bar. 

§  346a.  The  Pope  electric  railroad  signal  consisted  of 
the  combination  of  an  electric  battery ;  a  peculiar  arrange- 
ment of  electric  circuits ;  and  two  or  more  circuit  closers, 
operating  two  or  more  visual  or  audible  signals,  situated  at 
intervals  along  the  line  of  a  railroad.  That  peculiar  ar- 
rangement of  electric  circuits  essentially  consisted  in  at- 
taching two  line  wires  to  the  positive  and  negative  poles  of  a 
battery,  respectively ;  and  in  extending  both  of  those  wires 
any  required  distance  in  a  direction  substantially  parallel 
to  the  line  of  the  railroad ;  and  insulating  both  from  the 
earth  and  from  each  other ;  and  in  connecting  one  of  them 
at  intervals  with  insulated  rails  in  one  of  the  two  lines  of 
rails  of  the  railroad  track ;  and  in  connecting  the  other  one 
of  those  wires  at  the  same  intervals  with  insulated  rails  in 
the  other  line  of  rails  in  the  same  track ;  and  interposing 
an  electro-magnet  at  some  point  in  each  of  these  latter  con- 
nections. An  alleged  inf ringer  in  one  case,1  used  an  electric 
railroad  signal  differing  from  that  of  Pope,  mainly  in  the 
peculiar  arrangement  of  the  electric  circuits.  That  difference 
consisted  mainly,  in  disconnecting  the  negative  pole  of  the 
battery  from  its  line  wire,  and  in  connecting  that  pole  with 
the  earth  adjacent  thereto,  and  in  connecting  the  remote  end 
of  the  disconnected  line  wire  with  the  earth  adjacent  to  that 
end.  These  changes  of  arrangement  changed  the  mode  of 
operation  of  the  apparatus,  in  that  they  caused  the  elec- 
tricity to  traverse  circuits  of  equal  length  when  the  series 

1  Electric  Signal  Co.  c.  Hall  Signal  Co.  114  U.  S.  87,  1885. 


CHAP.  XVI.]  IXFBINGEMENT.  269 

of  circuit  closers  were  successively  operated,  whereas  Pope's 
arrangement  caused  the  electricity  to  traverse  circuits  of 
widely  variant  lengths  at  such  times.  This  change  of  mode 
of  operation  resulted  in  a  uniformity  of  electrical  resistance 
among  all  the  circuits,  and  thus  much  increased  the  utility 
of  the  apparatus.  The  Supreme  Court  therefore  held  the 
alleged  infringer's  combination  to  be  an  independent  inven- 
tion, substantially  different  from  that  of  Pope,  and  not  an 
infringement  of  his  patent. 

§  347.  Addition  to  a  patented  machine  or  manufacture 
does  not  enable  him  who  makes,  uses,  or  sells  the  patented 
thing  with  the  addition,  to  avoid  a  charge  of  infringement.1 
This  is  true  even  where  the  added  device  facilitates  the 
working  of  one  of  the  parts  of  the  patented  combination, 
and  thus  makes  the  latter  perform  its  function  with  more 
excellence  and  greater  speed.1  But  there  is  a  necessary 
qualification  of  this  rule,  which  must  not  be  overlooked ; 
a  qualification  founded  as  yet  upon  no  adjudicated  case 
exactly  in  point,  but  based  on  considerations  of  justice 
which  cannot  be  ignored  nor  disputed.  If  a  patented  com- 
bination differs  from  some  older  combination,  only  in  the 
omission  of  one  of  the  parts  of  the  latter,  and  in  a  result- 
ing difference  of  mode  of  operation,  the  restoration  of  the 
older  structure  by  adding  the  part  which  the  patented  com- 
bination omitted,  would  not  constitute  an  infringement  of 
the  latter. 

§  348.  Changing  the  relative  positions  of  the  parts  of  a 
machine  or  manufacture  does  not  avert  infringement  where 
the  parts  transposed  perform  the  same  respective  functions 
after  the  change  as  before.8  In  the  first  of  the  cases  just 
cited,  the  thing  transposed  was  a  beater  shaft  in  a  corn- 


1  Can-  «.  Rice,  1  Fisher.  209, 1856;  Rep.  187,  1877. 

Roemer  v.  Simon,  20  Fed.  Rep.  197,  3  Adams  a.  Mfg.  Co.  3  Bann.  & 

1884;  Royer  v.  Coupe,  29  Fed.  Rep.  Ard.  1,  1877 ;  Knox  v.  Quicksilver 

366,  1886;  Filley  v.  Stove  Co.  30  Mining  Co.  6   Sawyer,  438,   1878; 

Fed.  Rep.  434,  1887.  North  Western  Horse  Nail  Co.  v. 

*  Cochrane  v.  Deener,   94  U.  S.  Horse  Nail  Co.  28  Fed.  Rep.  234, 

786,  1876;  Wirt  t>.  Brown,  30  Fed.  1886. 


270  INFRINGEMENT.  [CHAP.   XVI. 

slieller.  Both  in  its  original  and  in  its  new  position,  its 
function  was  to  force  the  ears  of  corn  into  the  throat  of  the 
sheller.  In  the  second  case,  the  thing  transposed  was  the 
outlet  vapor  flue  of  a  quicksilver  furnace ;  and  that  flue 
operated  in  the  same  way  to  perform  the  same  function  in 
the  infringing  apparatus  that  it  did  in  the  patented  furnace. 

But  changing  the  relative  positions  of  the  parts  of  a  ma- 
chine does  avert  infringement,  where  the  changing  of  those 
positions  so  changes  the  functions  of  the  parts,  that  the 
machine  acquires  a  substantially  different  mode  of  opera- 
tion, even  though  the  result  of  the  machine  remains  the 
same.1  A  suit  for  infringement  cannot  be  sustained  against 
him  who  makes,  uses,  or  sells  a  substantially  different  com- 
bination, even  though  it  includes  exactly  the  same  ingre- 
dients as  those  claimed  in  combination  by  the  patent  in 
suit.2  The  owner  of  a  patent  for  a  combination  cannot 
suppress  a  newer,  better,  and  substantially  different  com- 
bination of  the  same  ingredients.3 

§  349.  Omission  of  one  ingredient  of  a  combination  cov- 
ered by  any  claim  of  a  patent,  averts  any  charge  of  infringe- 
ment based  on  that  claim.4  A  combination  is  an  entirety. 
If  one  of  its  elements  is  omitted,  the  thing  claimed  disap- 
pears. Every  part  of  the  combination  claimed  is  conclu- 
sively presumed  to  be  material  to  the  combination,  and  no 
evidence  to  the  contrary  is  admissible  in  any  case  of  alleged 
infringement.5  The  patentee  makes  all  the  parts  of  a  com- 

1  Brooks  9.  Fisk,  15  Howard,  221,  Shepard  ®.  Carrigan,  116  U.  S.  597, 
1853.  1885;  Sharp  v.  Riessner,  119  U.  S. 

2  Gill  v.  Wells,  22  Wallace,    14,  636,  1886;   Ott  «.   Earth,    32  Fed. 
1874 ;    Snow  «.  Railway  Co.  121  U.  Rep.  91,  1887;  Thompson  v.  Gilder- 
S.  629,  1886.  sleeve,  34  Fed.  Rep.  45, 1888;  Schmid 

3  Seymour  t>.  Osborne,  11  Wallace,  v.  Mfg.  Co.  37  Fed.  Rep.  347, 1889. 
555,  1870.  6  Vance  v.  Campbell,  1  Black.  430, 

4  Prouty  v.   Ruggles,    16  Peters,  1861 ;  Fay  v.  Cordesman,  109  U.  S. 
341,    1842  ;    Eames  v.    Godfrey,    1  420,  1883 ;  Sargent  *.  Lock  Co.  114 
Wallace,  78,  1863;  Case  t>.  Brown,  U.  S.  86,  1884;  Shepard®.  Carrigan, 
2   Wallace,  320,  1864  ;    Dunbar  c.  116  U.  S.  597,  1885  ;  Yale  Lock  Co 
Myers,  94  U.  S.  187,  1878;  Fuller  v.  v.   Sargent,    117  U.    S.   878,   1885 ; 
Yentzer,  94  U.  S.  297,  1876;  Rowell  LeFever  v.  Remington,  13  Fed.  Rep. 
v.  Lindsay,    113   U.    S.   102,    1884;  86,  1882;   Snow  v.  Railway  Co.  18 


CHAP.  XVI.]  INFRINGEMENT.  271 

bination  material,  when  lie  claims  them  in  combination  and 
not  separately.1  A  patentee  may,  however,  describe  all  the 
devices  in  his  machine  or  manufacture,  and  instead  of  claim- 
ing all  or  any  particular  portion  of  them  in  combination, 
may  claim  so  much  of  the  described  mechanism  as  pro- 
duces a  particular  described  result.  Such  a  claim  is  in- 
fringed by  him  who,  without  ownership  or  license,  makes, 
uses,  or  sells  any  apparatus  made-  up  of  enough  of  the  de- 
scribed devices  to  produce  the  specified  result,  by  the  speci- 
fied mode  of  operation."  The  rule  stated  at  the  head  of  this 
section  is  perhaps  the  best  known  and  most  frequently  ap- 
plied of  all  the  rules  which  pertain  to  infringement ;  but  it 
has  no  application  to  anything  which  depends  upon  a  par- 
ticular form  for  patentability,  and  which  for  convenience 
may  be  made  in  several  sections.  A  shoe  last,  for  example, 
even  if  made  in  only  two  sections,  may  infringe  a  patent  for 
a  last  of  the  same  shape,  but  which  is  made  in  three  sections 
instead  of  in  two.3 

§  350.  No  substitution  of  an  equivalent  for  any  ingredi- 
ent of  a  combination  covered  by  any  claim  of  a  patent  can 
avert  a  charge  of  infringement  of  that  claim.4  But  like 
substitution  of  something  which  is  not  an  equivalent,  will 
have  that  effect.6  The  doctrine  of  equivalents  may  be  in- 
voked by  any  patentee  whether  he  claimed  equivalents  in 
his  claim,8  or  described  any  in  his  specification,7  or  omitted 

Fed.    Rep.    602,  1883;    Travers  v.  62,  1853;  Imhaeuser  n.  Buerk,  101 

Palmer,  23  Fed.   Rep.   511,    1885 ;  U.  S.  655,  1879 ;  Reed  v.  Chase,  25 

Schilliiiger  v.  Cranford,  37  Off.  Gaz.  Fed.  Rep.  94,  1885  ;  American  Box 

1355,  1885.  Machine  Co.  v.  Day,  32  Fed.  Rep. 

1  Water-Meter  Co.  «.  Desper,  101  585,    1887 ;    Ligowski  Clay  Pigeon 

U.  S.  332,  1879 ;   Brown  t>.  Davis,  Co.  v.  Clay  Bird  Co.  34  Fed.  Rep. 

116  U.  S.    249,  1885 ;  Williams  v.  331,  1888. 

Stolzenbach,  23  Fed.  Rep.  41, 1885  ;  6  Railway  Co.  v.  Sayles,  97  U.  S. 

Otley  v.  Watkins,  36  Fed.  Rep.  324,  562,  1878. 

1888.  6  Dental  Vulcanite  Co.  t.  Davis, 

8  SUsby  «.  Foote,  14  Howard,  218,  102  U.  S.  2'29,  1880. 

1852.  7  Union  Metallic  Cartridge  Co.  t>. 

3Mabie  «.   Haskell,  2  Clif.  511,  United  States  Cartridge  Co.  2  Bann. 

1865.  &  Ard.  594,  1877. 

4  O'Reilly  «.  Morse,  15  Howard, 


272  INFRINGEMENT.  [CHAP.  XVI. 

to  do  either  or  both  of  those  things.  But  where  a  patentee 
states  in  his  specification  that  a  particular  part  of  his  in- 
vention is  to  be  constructed  of  a  particular  material,  and 
states  or  implies  that  he  does  not  contemplate  any  other 
material  as  being  suitable  for  the  purpose,  it  is  not  certain 
that  any  other  material  will  be  treated  by  a  court  as  an 
equivalent  of  the  one  recommended  in  the  patent.1  Com- 
bination patents  would  generally  be  valueless  in  the  ab- 
sence of  a  right  to  equivalents,  for  few  combinations  now 
exist,  or  can  hereafter  be  made,  which  do  not  contain  at 
least  one  element,  an  efficient  substitute  for  which  could 
readily  be  suggested  by  any  person  skilled  in  the  particular 
art.2 

§  351.  To  define  an  equivalent  is  at  present  a  weighty 
and  difficult  undertaking.  It  is  weighty  because  many 
rights  of  property  now  depend,  and  always  will  depend, 
upon  the  definition.  It  is  difficult  because  the  deliverances 
of  the  Supreme  Court  upon  the  subject  are  inharmonious, 
and  because  none  of  those  deliverances  are  accompanied  by 
elementary  reasoning  on  the  merits  of  the  question.  The 
primary  points  are  plain.  The  difficulties  arise  in  the  lat- 
ter part  of  the  problem  ;  but  the  plain  points  require  to  be 
stated  in  order  that  the  others  may  be  methodically 
reached  and  intelligently  discussed. 

§  352.  One  thing,  to  be  the  equivalent  of  another,  must 
perform  the  same  functions  as  that  other.*  If  it  performs 
the  same  function,  the  fact  that  it  also  performs  another 
function  is  immaterial  to  any  question  of  infringement.4 
Therefore,  it  sometimes  happens  that  a  junior  device  is  an 
equivalent  of  a  senior  device  in  a  sense  that  will  constitute 


1  Aiken  «.  Bemis,  3  Woodbury  &  113  U.  S.  103,  1884  :  Railway  Mfg. 

Minot.  348,    1847;  Harris  v.  Allen,  Co.    v.  Railroad  Co.    30  Fed.  Rep. 

15  Fed.  Rep.  106.  1883 ;  Schillinger  238,  1887. 

».  Cranford,  37  Off.  Gaz.  1349,  1885.  4  Foss  «.    Herbert,   2  Fisher,  31, 

5  Turrell  v.    Spaeth,  3  Bann.   &  1856  ;  Sarven  v.  Hall,  &  Blatch.  524, 

Ard.  458.  1878.  1872;    Wheeler    «.    Reaper  Co.    10 

3  Machine  Co.  «.  Murphy,  97  U.  Blatch.  195,  1872;  Kendrick  «.  Em- 

S.    125,    1877  ;  Rowell  v.   Lindsay,  mons,  3  Bann.  &  Ard.  623,  1878. 


CHAP.  XVI.]  INFRINGEMENT.  273 

it  an  infringement  of  a  patent  for  the  latter  ;  at  the  same 
time  that  the  senior  device  is  not  an  equivalent  of  the 
junior  device  in  a  sense  that  will  cause  the  former  to  nega- 
tive invention  or  novelty  in  the  latter.1  One  thing  may 
accordingly  be  an  equivalent  of  another,  though  it  does 
more  than  that  other,  but  it  cannot  be  such  an  equivalent 
if  it  does  less."  But  the  test  of  function  is  only  the  first  of 
several  tests  of  equivalency.  The  fact  that  one  thing  per- 
forms the  same  function  as  another,  though  necessary,  is 
not  sufficient  to  make  it  an  equivalent  thereof.3 

§  353.  Function  must  be  performed  in  substantially  the 
same  way  by  an  alleged  equivalent,  as  by  the  thing  of  which 
it  is  alleged  to  be  an  equivalent,  in  order  to  constitute  it 
such.4  This  substantial  sameness  of  way  is  not  necessarily 
an  identity  of  merit,6  nor  a  theoretical  scientific  sameness. 
In  a  purely  scientific  sense,  a  screw  always  performs  its 
function  in  a  substantially  different  way  from  a  lever,  and 
in  substantially  the  same  way  as  a  wedge.  Screws  and 
wedges  are  equally  inclined  planes,  while  a  lever  is  an  en- 
tirely different  elementary  power.  But  screws  and  levers 
can  practically  be  substituted  for  each  other  in  a  larger 
number  of  machines,  than  screws  and  wedges  can  be  sim- 
ilarly substituted.  When  a  lever  and  a  screw  can  be  inter- 
changed and  still  perform  the  same  function  with  a  result 
that  is  beneficially  the  same,  they  are  said  to  perform  the 
same  function  in  substantially  the  same  way.'  But  one 
thing  may  be  an  equivalent  of  another  in  one  environment, 

1  In  reHebard,  1  McArthur's  Pat-  1877  ;  Dryfoos  *.  Wiese,  124  U.  8. 

ent  Cases,  550,  1857;  Loercher  v.  37,  1887;  Forncrook  v.  Root,  127 

Crandal,  11  Fed.  Rep.  857,  1881;  U.  S.  181,  1887;  Sargent  v.  Burgess, 

Section  36  of  this  book.  129  U.  S.  19,  1889;  Sickels  v.  Bor- 

«  Bliss  v.  Haight,  3  Fisher,  626,  den,  3  Blatch.  535,  1856;  Peard  v. 

1869.  Johnson,  23  Fed.  Rep..  509,  1885; 

3  Eames  v.  Godfrey,   1   Wallace.  Tonduer  t>.  Chambers,  37  Fed.  Rep. 
78,  1863;  Conover  -c.  Roach,  4  Fish-  337,  1889. 

er,    12,  1857;  Merriam  t>.   Drake,  5  s  Roosevelt  t>.    Telegraph   Co.  33 

Fisher,  259,  1872.  Fed.  Rep.  510.  1887. 

4  Burr  0.  Duryee,  1  Wallace,  573,  6  Turrell  v.  Spaeth,   3  Bann.   & 
1863;  Werner  t».  King,  96  U.  S  230,  Ard.  458,  1878. 


274  INFRINGEMENT.  [CHAP.   XVI. 

and  not  such  an  equivalent  in  another  situation.1  Springs 
and  weights  are  generally  equivalents  ; a  but  when  the  en- 
vironment is  such  that  a  spring  will  operate  successfully 
while  a  weight  will  not  so  operate,  then  they  are  not  equiv- 
alents.3 While  in  most  cases  a  mere  handle  is  not  an 
equivalent  of  a  lever,  it  is  such  an  equivalent  where  its  con- 
nections are  such  that  it  performs  the  same  function  in 
substantially  the  same  way.4  But  infringement  is  averted 
by  using  a  hand,  instead  of  a  lever  of  a  claimed  combina- 
tion, to  work  a  rod.5  However,  in  one  case,  the  Supreme 
Court  went  to  the  length  of  deciding  a  confined  column  of 
water  in  a  cylinder,  worked  by  a  pump  and  working  a  pis- 
ton, to  be  an  equivalent  of  a  combination  of  a  vibrating 
arm,  toggle  joint,  and  other  mechanical  devices,  when  used 
to  transmit  Adbratory  power." 

In  view  of  the  foregoing  adjudications,  and  of  the  nature 
of  the  question,  it  is  at  present  impossible  to  say  precisely 
wherein  the  required  sameness  of  way  of  performing  a 
function  really  consists  ;  and  in  view  of  the  vast  variety  of 
present  and  future  mechanical  devices  and  modes  of  opera- 
tion, it  will  probably  be  always  impossible  to  formulate  a 
criterion  which  will  be  applicable  to  every  case.  The 
safest  reliance  is  upon  the  analogies  of  precedents,  and 
upon  the  instructed  sagacity  of  those  who  are  called  upon 
to  advise  and  to  decide  in  new  cases. 

§  354.  Whether  a  device,  in  order  to  be  an  equivalent  of 
another,  must  have  been  known  at  the  time  of  the  invention 
or  of  the  patent,  is  the  final  inquiry  relevant  to  the  char- 
acteristics of  equivalents.  It  is  a  point  of  large  import- 
ance. The  affirmative  view  seems  to  have  originated  in  the 


1  Cochrane  v.  Deener,  94  U.  S.  lace,  235,  1874;  Steam  Gauge  &  Lan- 

789,  1876;  Hubel  v.  Dick,  28  Fed.  tern  Co  c.  Mfg.  Co.  28  Fed.  Rep. 

Rep.  136,  1886.  619,  1886. 

*  Imhaeuser  v.  Buerk,  101  U.  8.  »  Brown  t>.  Davis,  116  U.  S.  249, 

656,  1879.  1885. 

8  Cross  v.  Mackinnon,  11  Fed.  6  Blake  v.  Robertson,  94  U.  S. 

Rep.  601,  1882.  732,  1876. 

4  Corn-Planter    Patent,   23  Wai- 


CHAP.  XVI.]  INFRINGEMENT.  275 

mind  of  Justice  CLIFFORD,  and  to  have  originated  there  in 
the  Fall  of  1865.  In  November  of  that  year  he  instructed 
a  jury  that  a  thing  to  be  an  equivalent  of  an  article  in  a 
patent,  must  have  been  known  at  the  date  of  the  invention, 
and  of  the  patent.1  The  rule  of  the  Supreme  Court,  at 
that  time,  seems  to  have  been  that  a  thing  might  be  an 
equivalent  of  a  thing  in  a  patent,  if  known  to  be  such  at  the 
time  of  the  infringement.2  Indeed,  Justice  CLIFFORD  him- 
self, in  1861,  had  delivered  a  carefully  prepared  instruction 
to  a  jury,  in  which  he  said  :  "  You  will  regard  the  substan- 
tial equivalent  of  a  thing  as  being  the  same  as  the  thing 
itself,  so  that,  if  two  machines  do  the  same  work,  in  sub- 
stantially the  same  way,  and  accomplish  substantially  the 
same  result,  they  are  the  same ;  and  so  if  parts  of  the  two 
machines  do  the  same  work,  in  substantially  the  same  way, 
and  accomplish  substantially  the  same  result,  those  parts 
are  the  same,  although  they  may  differ  in  name,  form,  or 
shape." '  Engaged,  as  he  then  was,  in  defining  an  equiva- 
lent, he  wholly  omitted  the  element  of  age.  Indeed,  as 
late  as  October,  1865,  he  found  a  defendant's  device  to  be 
an  equivalent  of  a  thing  in  a  patent,  because  it  performed 
the  same  function,  in  substantially  the  same  way,  and  pro- 
duced substantially  the  same  result.4  Here  is  no  allusion 
to  any  element  of  age  in  the  characteristics  of  an  equiva- 
lent. That  element'  was  introduced  into  the  definition 
later  in  the  Fall.  But  no  statute  relevant  to  the  subject 
was  enacted  in  the  interval,  nor  indeed  at  any  other  t;me, 
either  before  or  since  Justice  CLIFFORD  changed  his  views. 
Nor  did  Justice  CLIFFORD  ever  announce  the  reasons  which 
carried  him  to  his  altered  definition.  He,  however,  re- 
peated the  later  proposition  in  several  subsequent  cases. 

In  Seymour  v.  Osborne,6  he  said,  that  in  order  to  be  an 
equivalent  of  a  thing  in  a  patent,  a  device  must  have  been 

1  Union  Sugar  Refinery  v.  Mat-  1861. 

thiessen,  2  Fisher,  629,  1865.  4  Roberts  v.  Harnden,  2  Clif.  506, 

1  O'Reilly  ».  Morse,  15  Howard,  1865. 

123,  1853.  5  Seymour  v.  Osborne,  11  Wal- 

8 '  Gaboon    v.   Ring,  1    Clif.   620,  lace,  556,  1870. 


276  INFRINGEMENT.  [CHAP.   XVI. 

known  at  the  date  of  the  patent.  In  support  of  that  state- 
ment he  cited  two  cases,  neither  of  which  appears  to  relate 
to  the  precise  point.1  But  after  formulating  the  doctrine 
he  was  content  to  ignore  it,  and  he  reasoned  out  the  ques- 
tion of  infringement  in  the  case  with  sole  reference  to  the 
character  of  the  defendant's  machines,  and  without  any  re- 
gard to  the  point  of  time  when  any  parts  of  those  machines 
first  became  known.  Indeed  he  expressly  said  that  ques- 
tions of  infringement  are  best  determined  by  a  comparison 
of  the  machines.  Now,  it  is  evident  that  a  comparison  of 
two  machines  has  no  tendency  to  show  whether  a  particular 
device  in  one  of  them,  was  or  was  not  known  when  the 
other  was  patented. 

In  Gould  v.  Bees  *  Justice  CLIFFORD  delivered  the  opinion 
of  the  Supreme  Court,  reversing  a  judgment  in  an  action 
at  law,  because  the  judge  had  charged  the  jury  that  the 
omission  of  one  of  the  elements  of  a  combination,  and  the 
substitution  of  another  mechanical  device  to  perform  the 
same  function,  will  not  avoid  infringement.  Now  that  in- 
struction was  clearly  wrong,  because  it  did  not  provide,  as  it 
ought,  that  the  substitute  must  perform  the  same  function  in 
substantially  the  same  way,  in  order  to  be  an  equivalent 
for  the  thing  for  which  it  is  substituted.3  The  Supreme 
Court,  therefore,  decided  that  the  instruction  was  erroneous, 
but  Justice  CLIFFORD,  in  delivering  the  opinion,  said,  in 
effect,  that  it  ought  also  to  have  been  limited  by  the  proviso 
that  the  thing  substituted  should  have  been  known  at  the 
date  of  the  patent.  The  case  did  not  call  for  any  decision 
on  that  point,  because  the  undoubted  error  in  the  charge 
was  enough  to  require  a  reversal  of  the  judgment.  Nor  is 
the  dictum  supported  by  any  reasoning,  or  by  any  citation 
of  authority  other  than  the  previous  dictum  of  the  same 
justice  in  the  case  of  Seymour  v.  Osborne.  It  is  true  that 


1  Prouty  v.  Ruggles,    16   Peters,  1872. 

341,  1842;  Johnson  v.  Root,  2  Clif.  3  Burr  v.  Duryee,  1  Wallace,  573, 

123,  1862.  1863;  Sickles  v.  Borden,  3  Blatch. 

•  Gould  v.  Rees,  15  Wallace,  193.  535, 1856. 


CHAP.  XVI.]  INFRINGEMENT.  277 

the  doctrine  is  repeated  on  page  194,  in  the  same  paragraph 
with  an  undeniable  doctrine  of  the  patent  law,  and  the 
whole  paragraph  purports  to  be  supported  by  nine  cited 
cases.  But  none  of  those  cases  has  any  relevancy  to  the 
point  now  under  examination,  though  they  do  support  the 
other  doctrine  of  the  paragraph. 

In  Gill  v.  Wells1  Justice  CLIFFORD  repeated  his  revised 
definition  of  an  equivalent,  and  stated  that  it  was  based  on 
repeated  Supreme  Court  decisions.  He  cited  seven  pre- 
cedents to  sustain  this  statement.  Five  of  them  have  no 
apparent  relevancy  to  the  point,2  and  the  other  two  are  his 
own  dicta  in  Seymour  v.  Osborne,  and  Gould  v.  Rees.  He 
also  cited  his  own  prior  decision  in  Eoberts  v.  Harnden,' 
but  he  who  turns  to  that  case  will  find  that  its  definition  of 
an  equivalent  is  the  former  one ;  the  one  which  omits  the 
element  of  age.  The  repetition  of  the  later  dicta  in  Gill  v. 
Wells,  was  also  obiter,  because,  before  repeating  it,  Justice 
CLIFFORD  had  delivered  the  opinion  of  the  Court  holding  the 
instructions  which  the  judge  below  gave  to  the  jury  on  the 
question  of  the  validity  of  the  patent  as  a  reissue,  to  have 
been  erroneous  instructions.  In  proceeding  further  Justice 
CLIFFORD  was  proceeding  merely  as  a  moot  judge.  Indeed, 
after  laying  down  his  rules  on  the  subject  of  equivalents 
and  of  infringement,  his  Honor  said  that :  "  Inconveniences 
past  estimation  would  result  if  those  rules  should  be  ap- 
plied in  defining  the  rights  of  a  patentee  to  make  amend- 
ments to  the  specification  of  an  original  patent  when  apply- 
ing for  a  reissue." 

Union  Paper-Bag  Machine  Co.  v.  Murphy,4  decided  two 
years  later  than  Gill  v.  Wells,  was  an  equity  suit  which 
turned  on  the  question  of  infringement.  The  court  below 


1  Gill  «.  Wells,   22  Wallace,  81,  «.  Campbell,  1  Black,  428,  1861. 
1874.  3  Roberts  v.  Harnden,  2  Clif.  506, 

2  Prouty  v.   Ruggles,    16  Peters,  1865. 

341,  1842;  Carver  v.  Hyde,  16  Pe-  4  Machine  Co.  v.  Murphy,  97  U. 

ters,514, 1842;  Stimpson«.  Railroad,  S.   125,1877;    Cantrell  v.  Wallick, 

10  Howard,   329,  1850;    Brooks  «.  117  U.  8.  695,  1885. 
Fisk,  15  Howard,  212,  1853;  Vance 


278  INFRINGEMENT.  [CHAP.  XVI. 

found  non-infringement,  but  the  Supreme  Court  reversed 
that  decision.  In  delivering  the  opinion  Justice  CLIFFORD 
returned  to  his  earlier  definition  of  an  equivalent ;  to  that 
definition  which  he  gave  sixteen  years  before  in  Cahoon  v. 
King,  and  enforced  twelve  years  before  in  Roberts  v. 
Harnden.  He  now  formulated  his  views  as  follows  :  "  Au- 
thorities concur  that  the  substantial  equivalent  of  a  thing, 
in  the  sense  of  the  patent  law,  is  the  same  as  the  thing 
itself  ;  so  that  if  two  devices  do  the  same  work  in  substan- 
tially the  same  way,  and  accomplish  substantially  the  same 
result,  they  are  the  same,  even  though  they  differ  in  name, 
form,  or  shape." 

But  in  Imhaeuser  v.  Buerk  '  Justice  CLIFFORD  once  more 
repeated  his  second  and  revised  definition  of  an  equiva- 
lent :  the  definition  which  he  originated  in  the  case  of  the 
Union  Sugar  Refinery  v.  Matthiesen.  But  after  repeating 
it  he  ignored  it,  and  reasoned  out  the  question  of  infringe- 
ment in  the  case,  on  the  basis  of  his  earlier  definition :  the 
definition  in  Cahoon  v.  Ring :  the  definition  which  ignores 
age,  and  confines  itself  to  function  and  to  character. 

§  355.  No  other  Supreme  Court  justice  has  ever  inserted 
just  such  doctrine  as  that  of  Justice  CLIFFORD'S  second 
definition  of  an  equivalent,  into  any  opinion  of  that  tribunal. 
Several  cases  have  been  adjudicated  in  that  court,  which 
called  for  the  application  of  that  doctrine,  if  it  is  a  true  one, 
but  it  has  never  been  applied  to  any  necessary  issue  pend- 
ing therein.  On  the  contrary,  that  court,  subsequent  to 
the  case  of  Gill  v.  Wells,  expressly  decided  that  two  things 
are  equivalents  where  they  perform  the  same  function,  in 
substantially  the  same  manner.2  On  the  other  hand  Justice 
BLATCHFORD  said  in  a  recent  Supreme  Court  case,  that  the 
complainant  at  bar  was  "  entitled,  under  decisions  hereto- 
fore made  by  this  Court,  to  hold  as  infringements  all  valve 
regulations  applied  to  such  combination  which  perform  the 
same  office  in  substantially  the  same  way  as,  and  were 


1  Imhaeuser  v.  Buerk,  101  U.  S.          *  Mason  v.  Graham,  23  Wallace, 
656,  1879.  275,  1874. 


CHAP.  XVI.]  INFRINGEMENT.  279 

known  equivalents  for,  his  form  of  valve  regulation." l  But 
in  so  saying,  Justice  BLATCHFOBD  did  not  say  that  the  com- 
plainant would  not  have  been  entitled  to  hold  as  infringe- 
ments all  valve  regulations,  applied  to  such  a  combination, 
which  performed  the  same  office,  in  substantially  the  same 
way.  Nor  is  such  a  denial  deducible  by  any  fair  implica- 
tion from  the  facts  of  the  case.  Those  facts  could  not  only 
endure  the  milder  test,  but  could  also  endure  the  other  and 
severer  one  which  results  when  the  element  of  age  is  in- 
serted in  the  definition  of  an  equivalent.  But  the  opinion 
contains  no  finding  and  no  statement  that  the  milder  test 
would  not  have  been  sufficiently  severe  for  the  purpose  in 
hand,  if  the  facts  had  been  unable  to  endure  the  more 
exacting  criterion. 

§  356.  Nearly  all  the  Circuit  Courts  have  uniformly  ig- 
nored the  element  of  age  when  inquiring  about  equivalents, 
and  several  of  them  have  decided  or  stated  that  one  thing 
is  an  equivalent  of  another  where  it  performs  substantially 
the  same  function,  in  substantially  the  same  way.8  Indeed, 
Justice  CLIFFORD  himself  decided  the  third  of  these  cases, 
the  case  of  Graham  v.  Mason,  and  in  doing  so  said  that  "  It 
is  a  well-settled  law  that  if  one  device  is  employed  in  a 
similar  combination  as  another,  and  performs  the  same 
function  in  the  same  way,  the  two  are  substantially  the 
same,  although  they  may  be  different  in  form,  and  may  be 
known  among  mechanics  by  different  names."  Probably 
only  four  Circuit  Court  cases,3  except  a  part  of  those  decided 
by  Justice  CLIFFORD,  have  ever  recognized  any  such  defini- 
tion of  an  equivalent  as  embodies  the  element  of  age ;  and 
in  only  two  of  the  four  did  any  issue  depend  upon  the 
soundness  or  unsoundness  of  that  definition. 

1  Clough  «.  Mfg.   Co.  106  U.  S.       15  Fed.  Rep.  112,  1883. 

178,  1882.  3  King  v.   Cement  Co.  6  Fisher, 

2  Conover  v.  Roach,  4  Fisher,  26,  341,  1873;  Webster*.  Carpet  Co.  1 
1857;  Conover  v.  Rap,  4  Fisher.  61,  Bann.  &  Ard.  90,  1874;  Babcock  «. 
1859;    Graham  v.  Mason,  5  Fisher,  Judd,  5  Bann.  &  Ard.  130,    1880; 
11,   1869;  Harwood  t>.  Mfg.  Co.  3  Welling  v.  La  Bau,  32  Fed.  Rep. 
Fisher,  530,  1869;  Vogler  «.  Semple,  295,  1885,  34  Fed.  Rep.  40,  1888. 

7  Bissell,  382,  1877;  Evory  v.  Burt, 


280  IN-b'KINGEMENT.  [CHAP.  XVI. 

§  357.  Justice  BLATCHFOED  lias  had  on  the  circuit  a  legiti- 
mate occasion  to  decide  whether  a  thing,  in  order  to  be  an 
equivalent  of  a  device  in  a  patent,  must  have  been  known 
at  the  date  of  the  invention  covered  by  that  patent.  That 
question  arose  and  was  argued  before  him  in  the  case  of 
the  Batchelder  Sewing  Machine,  and  was  decided  in  the 
negative.1  Each  claim  of  the  Batchelder  patent  was  for  a 
combination.  Among  them  the  fourth  consisted  of  four  in- 
gredients, and  among  those  ingredients  was  a  so-called  per- 
petual feed.2  That  perpetual  feed  consisted  of  a  belt  armed 
with  points  and  passing  around  rollers.  The  defendant 
substituted  for  that  device  a  four-motion  feed  which  was 
never  known  till  long  after  the  date  of  the  Batchelder 
invention,  and  long  after  the  date  of  the  Batchelder 
patent.  That  fact  of  newness  was  urged  as  a  reason  for 
finding  non-infringement,  but  Justice  BLATCHFORD  held  it 
to  constitute  no  ground  for  such  a  finding.  The  principle 
of  his  decision  in  this  case,  was  also  applied  by  the  same 
judge  to  a  question  of  electro-chemical  equivalents  in  an- 
other.3 

§  358.  The  question,  stated  at  the  head  of  Section  354, 
has  thus  far  been  treated  in  the  light  of  the  precedents 
without  regard  to  the  reasons  which  must  underlie  the  true 
answer.  None  of  these  precedents,  save  those  established 
by  Justice  BLATCHFOED,  seem  to  contain  any  argument  on 
the  point.  The  judges  appear  generally  to  have  contented 
themselves  with  following  such  decisions  or  obiter  dicta  on 
the  point,  as  were  called  to  their  attention,  or  as  arose  in 
their  memory,  and  accordingly  their  deliverances  are  so 
diverse  that  they  cannot  be  harmonized.  But  it  may  not 
be  impossible  to  reach  the  true  answer  by  a  process  of 
reasoning.  Until  such  a  process  is  found  to  lead  in  another 
direction,  it  is  probably  best  to  rely  upon  the  decision  of 
the  Supreme  Court*in  Mason  v.  Graham,  and  upon  that  of 


1  Potter  v.    Stewart,    18   Blatch,      105,  1869. 

563,  1881.  »  United  Nickel  Co.  v.  Pendleton, 

*  Potter  c.  Braunsdorf,  7  Blatch.      15  Fed.  Rep.  745,  1883. 


CHAP.  XVI.]  INFRINGEMENT.  281 

Justice  BLATCHFOED  in  Potter  v.  Stewart,  rather  than  upon 
the  obiter  dicta  of  Justice  CLIFFORD  in  Seymour  v.  Osborne, 
Gould  v.  Rees,  Gill  v.  Wells,  and  Imhaeuser  v.  Buerk. 
Until  such  a  process  is  found  to  establish  another  doctrine, 
it  is  safe  to  define  an  equivalent  as  a  thing  which  performs 
the  same  function,  and  performs  that  function  in  substan- 
tially the  same  manner,  as  the  thing  of  which  it  is  alleged 
to  be  an  equivalent. 

§  359.  Primary  inventions  are  entitled  to  a  somewhat 
looser  application  of  this  definition  of  an  equivalent,  than 
those  inventions  which  are  secondary.  A  primary  inven- 
tion is  one  which  performs  a  function  never  performed  by 
any  earlier  invention  ;  while  a  secondary  invention  is  one 
which  performs  a  function  previously  performed  by  some 
earlier  invention,  but  which  performs  that  function  in  a 
substantially  different  way  from  any  that  preceded  it.1 
There  are  but  three  Supreme  Court  cases  which  have 
clearly  attended  to  the  distinction  now  under  treatment. 

In  the  first  of  these  cases  the  court  said  :  "  If  the  patentee 
be  the  original  inventor  of  the  device  or  machine  called  the 
divider,  he  will  have  a  right  to  treat  as  infringers  all  who 
make  dividers  operating  on  the  same  principle,  and  per- 
forming the  same  functions  by  analogous  means  or  equiv- 
alent combinations,  even  though  the  infringing  machine 
may  be  an  improvement  of  the  original,  and  patentable  as 
such.  But  if  the  invention  claimed  be  itself  but  an  im- 
provement on  a  known  machine  by  a  mere  change  of  form 
or  combination  of  parts,  the  patentee  cannot  treat  another 
as  an  infringer  who  has  improved  the  original  machine  by- 
use  of  a  different  form  or  combination  performing  the  same 
functions.  The  inventor  of  the  first  improvement  cannot 
invoke  the  doctrine  of  equivalents  to  suppress  all  other  im- 
provements which  are  not  mere  colorable  invasions  of  the 
first." 

1  Butz    Thermo-Electric    Co.    v.  97  U.  S.  556,  1878;  Morley  Machine 

Electric  Co.  36  Fed.  Rep.  192,  1888.  Co.   «.   Lancaster,  129  U.    S.    273, 

8  McCormick  v.  Talcott.  20  How-  1889. 
ard,  405, 1857;  Railway  Co.  D.  Sayles, 


282  INFRINGEMENT.  [CHAP.  XVI. 

In  the  second  of  these  cases  the  court  said :  "  In  such 
cases,  if  one  inventor  precedes  all  the  rest,  and  strikes  out 
something  which  includes  and  underlies  all  that  they  pro- 
duce, he  acquires  a  monopoly,  and  subjects  them  to  tribute. 
But  if  the  advance  toward  the  thing  desired  is  gradual,  and 
proceeds  step  by  step,  so  that  no  one  can  claim  the  com- 
plete whole,  then  each  is  entitled  only  to  the  specific  form 
of  device  which  he  produces,  and  every  other  inventor  is 
entitled  to  his  own  specific  form,  so  long  as  it  differs  from 
those  of  his  competitors,  and  does  not  include  theirs." 

In  the  third  of  these  cases  the  court  said :  "  Where  an 
invention  is  one  of  a  primary  character,  and  the  mechanical 
functions  performed  by  the  machine,  are,  as  a  whole,  en- 
tirely new,  all  subsequent  machines  which  employ  substan- 
tially the  same  means  to  accomplish  the  same  result  are 
infringements,  although  the  subsequent  machine  may  con- 
tain improvements  in  the  separate  mechanisms  which  go 
to  make  up  the  machine."  And  the  court  also  said  that 
secondary  patents  ought  to  receive  a  narrower  construction 
than  this. 

The  exact  thought  which  resides  in  the  breasts  of  the 
judges,  probably  cannot  be  learned  from  any  mere  reading 
of  those  three  deliverances.  They  require  analysis,  and 
that  analysis  must  be  made  in  the  light  of  several  consider- 
ations which  do  not  appear  upon  the  face  of  the  language 
used  by  the  court.  Let  the  mind  be  therefore  directed 
a  while  to  such  an  inquiry,  before  dropping  the  point  and 
proceeding  to  another  branch  of  the  subject  of  infringe- 
ment. 

§  360.  Consider  first  the  case  of  primary  patents.  Such 
a  patent  is  said  in  McCormick  v.  Talcott  to  be  infringed  by 
things  "  which  operate  on  the  same  principle,"  and  "  per- 
form the  same  functions"  by  "  analogous  means"  or  "  equiv- 
alent combinations."  Now,  "  operating  on  the  same  prin- 
ciple" doubtless  means  having  the  same  "  mode  of  opera- 
tion ;"  '  and  the  signification  of  the  latter  phrase  is  now 

1  Burr  v.  Duryee,  1  Wallace,  531,  1863. 


CHAP.  XVI.]  INFRINGEMENT.  283 

fairly  well  established  in  the  patent  law.  "  Performing  the 
same  functions"  is  a  phrase  still  clearer  in  meaning,  and 
equally  just  in  its  application  to  the  matter  in  hand.  But 
the  expression  "  analogous  means"  leaves  that  important 
branch  of  the  rule  very  much  at  large.  "  Analogous"  sig- 
nifies "  bearing  some  resemblance."  Analogies  are  some- 
times detected  in  things  which  on  the  whole  are  decidedly 
unlike.  What  proportion  the  likeness  of  two  things  must 
bear  to  their  unlikeness,  in  order  that  they  may  constitute 
"  analogous  means"  is  a  point  upon  which  it  is  evident  the 
court  did  not  mean  to  be  precise.  "  Equivalent  combina- 
tions" doubtless  signifies  the  same  as  "combinations  of 
equivalents,"  and  therefore  that  branch  of  the  rule  gives  to 
primary  patents  the  benefit  of  the  doctrine  of  equivalents 
heretofore  explained.'  All  patents  are  entitled  to  that  doc- 
trine in  some  shape,  but  not  all  patents  are  entitled  to  sup- 
press everything  that  could  be  called  "  analogous  means" 
for  performing  their  functions.  Turning  now  to  Railway  Co. 
v.  Sayles,  it  appears  there  to  be  stated  that  a  primary 
patent  is  infringed  by  whatever  it  "  includes  and  under- 
lies." The  emphasis  here  must  be  placed  on  the  conjunc- 
tion, because  no  patent  is  infringed  by  any  combination  of 
the  parts  it  includes,  unless  that  combination  embraces  all 
of  the  parts  included  in  some  one  claim  of  the  patent.2  The 
word  "  underlie"  is  doubtless  used  metaphorically  in  this 
phrase.  It  cannot  mean  that  one  thing  infringes  the  patent 
for  another  merely  because  it  is  mechanically  placed  upon 
that  other,  and  is  kept  from  falling  to  the  ground  by  it. 
But  the  metaphorical  meaning  of  the  word  "  underlie"  as 
applied  to  inventions,  is  not  a  precise  meaning.  It  leaves 
scope  to  discretion  in  its  application,  and  was  doubtless  so 
intended.  Turning  now  to  Morley  Machine  Co.  v.  Lan- 
caster, it  is  found  that  primary  patents  are  there  said  to  be 


1  Sections  350  to  358  inclusive.  2   Wallace,   320,   1864;    Dunbar  «. 

*  Prouty  v.  Ruggtes,   16  Peters,  Myers,  94  U.  S.  187,  1876;  Fuller  v. 

341,   1842;    Eames   «.    Godfrey,    1  Yeutzer,  94  U.  S.  297,  1876. 
Wallace,  78,  1864;  Case  t.  Brown, 


284  INFKINGEMENT.  [CHAP.  XVI. 

infringed  by  subsequent  machines  which  employ  "  substan- 
tially the  same  means  to  accomplish  the  same  result." 
Here  again  it  must  be  said  that  all  patents  are  entitled  to 
cover  some  such  ground  as  that  ;  unless  it  is  to  be  said  that 
there  are  patents  which  can  be  infringed  only  by  exact 
copies  of  the  inventions  which  they  describe. 

§  361.  Now  consider  the  case  of  secondary  patents.  Mc- 
Cormick  v.  Talcott  states  that  such  a  patent  is  infringed 
only  by  "colorable  invasions."  That  also  is  a  metaphor. 
Its  meaning  seems  to  be  "  plain  appropriation,"  or  "  undeni- 
able infringement,"  undeniable,  of  course,  in  the  eye  of 
the  law,  and  not  necessarily  undeniable  by  persons  unac- 
quainted with  the  established  criteria,  by  means  of  which 
substantial  identity  or  substantial  difference  is  ascertained 
to  exist  in  a  given  case.  Turning  again  to  Bailway  Co.  v. 
Sayles,  it  is  found  there  to  be  stated  that  a  secondary  patent 
is  entitled  only  to  its  "specific  form  of  device."  But  that 
statement  is  qualified  near  the  bottom  of  page  561  by  the 
addition  of  the  words  "  or  that  which  is  substantially  the 
same."  Turning  once  more  to  Morley  Machine  Co.  v.  Lan- 
caster, we  find  that  secondary  patents  are  to  have  a  nar- 
rower construction  than  primary  patents,  but  how  much 
narrower  does  not  appear. 

§  362.  The  three  cases  seem  therefore  to  teach  general 
doctrines  rather  than  precise  rules ;  and  those  general  doc- 
trines appear  to  be  about  as  follows  : 

There  are  two  tests  of  equivalency.  1.  Identity  of  func- 
tion. 2.  Substantial  identity  of  way  of  performing  that 
function.1  Primary  as  well  as  secondary  patents  are  in- 
fringed by  no  substitutions  that  do  not  fully  respond  to  the 
first  of  these  tests.  The  second  of  these  tests  is  somewhat 
elastic,  because  it  contains  the  word  "  substantial."  That 
word  is  allowed  to  condone  more  and  more  important  differ- 
ences in  the  case  of  a  primary  patent,  than  in  the  case  of  a 


1  Steam  Gauge  and  Lantern  Co.  v.  1887 ;  Butz  Thermo-Electric  Co.  «. 
Rogers,  29  Fed.  Rep.  453,  1886;  Electric  Co.  36  Fed.  Rep.  195,  1888. 
Clark  v.  Wilsou,  30  Fed.  Rep.  373, 


CHAP.  XVI.]  INFRINGEMENT.  285 

secondary  one.  In  the  case  of  a  patent  narrowed  in  construc- 
tion by  an  extensive  state  of  the  preceding  art,  the  word 
"  substantial  "  will  give  but  little  elasticity  to  the  application 
of  the  doctrine.1  If  fewer  inventions  preceded  the  one  at 
bar,  the  word  will  have  somewhat  more  of  carrying  power. 
When  the  invention  at  bar  is  strictly  primary,  and  espe- 
cially if  it  is  extremely  useful,  then  the  word  "  substantial" 
will  be  made  to  cover  differences  alike  numerous  and  im- 
portant, and  even  highly  creditable  to  the  infringer  who  in- 
vented them."  Probably  the  most  striking  instances  of  the 
latter  sort  which  are  to  be  found  in  the  books,  are  to  be 
found  in  the  telephone  cases.3 

§  363.  A  change  of  form  does  not  avoid  an  infringement 
of  a  patent,  unless  the  patentee  specifies  a  particular  form  as 
the  means  by  which  the  effect  of  the  invention  is  produced,4 
or  otherwise  confines  himself  to  a  particular  form  of  what  he 
describes.5  Even  where  a  change  of  form  somewhat  modi- 
fies the  construction,  the  action  or  the  utility  of  a  patented 
thing,  non-infringement  will  seldom  result  from  such  a 
change.  The  best  way  to  show  the  scope  and  meaning  of 
these  rules  is  to  collect  and  explain  the  instances  in  which 
changes  of  form  have  been  held  to  be  immaterial  to  ques- 
tions of  infringement. 

§  364.  Strobridge  v.  Lindsay '  was  a  case,  the '  patent  in- 
volved in  which,  covered  a  coffee  mill.  The  hopper  and 
grinding  shell  of  that  mill  were  formed  in  a  single  piece, 
and  were  suspended  within  the  box,  by  the  upper  part  of  the 
hopper,  or  by  a  flange  thereon.  The  defendant's  mill  was 
like  the  complainant's,  except  that  the  hopper  and  the 
grinding  shell  were  separate  constructions,  but  were  firmly 

1  Duff  v.  Pump  Co.  107  U.  S.  639,  «.  Dolbear,  15  Fed.  Rep.  448,  1883. 

1882  ;    Polsdorfer  v.   Woodenware  4  O'Reilly  v.  Morse,  15  Howard. 

Works,  37.  Fed.  Rep.  57,  1888.  123,  1853  ;  Ewart  Mfg.  Co.  «.  Iron 

»  Hubel  «.  Dick,  28  Fed.  Rep.  136,  Co.  31  Fed.  Rep.  150,  1887. 

1886.  5  Pope  Mfg.  Co.  v.  Mfg.  Co.  34 

*  The  Telephone  Cases,  126  U.  S.  Fed.  Rep.  890,  1888. 

531, 1888;  American  Bell  Telephone  *  Strobridge  v.  Lindsay,   6  Fed. 

Co.  v.  Spencer,  8  Fed.  Rep.  509,  Rep.  510,  1881. 
1881 ;  American  Bell  Telephone  Co. 


286  INFRINGEMENT.  [CHAP. 

fastened  together  before  they  were  suspended  in  the.  box. 
That  change  of  form  resulted  in  a  change  of  construction, 
but  in  no  change  of  action  or  of  utility.  It  was  of  course 
held  not  to  avoid  infringement. 

§  365.  Ives  v.  Hamilton :  was  a  case  wherein  the  patent 
covered  a  combination  of  a  saw-mill  saw,  with  a  pair  of  curved 
guides  at  the  upper  end  of  the  saw ;  and  a  lever,  connecting 
rod  of  a  pitman,  straight  guides,  pivoted  cross- head,  and 
slides  or  blocks,  and  crank-pin,  or  their  equivalents,  at  the 
opposite  end;  whereby  the  toothed  edge  of  the  saw  was 
caused  to  move  unequally  forward  and  backward  at  its  two 
ends  while  sawing.  The  result  was  a  rocking  or  vibratory 
motion  in  the  saw  instead  of  the  straight  reciprocating  mo- 
tion theretofore  characteristic  of  saw-mill  saws.  The  de- 
fendant substituted  for  the  curved  guides  of  the  patent, 
similar  guides  made  crooked  by  a  broken  line.  But  the 
Supreme  Court  held  this  change  of  form  not  to  avoid  in- 
fringement, saying  that  a  curve  is  often  treated  even  in 
mathematical  science  as  constituting  a  succession  of  very 
short  straight  lines,  or  as  one  broken  line  constantly  chang- 
ing its  direction. 

§  366.  Morey  v.  Lockwood,"  was  a  case  in  which  the  bill 
was  based  on  the  patent  for  the  Davidson  syringe  ;  an  inven- 
tion which  furnishes  a  good  illustration  of  one  of  the  rules 
which  relate  to  infringement,  as  well  as  of  one  of  those 
which  relate  to  novelty.  In  it  the  bulb  was  placed  in  an 
axial  line  with  two  flexible  tubes,  and  received  enema  at 
one  of  its  endst  from  one  of  those  tubes,  and  discharged  the 
same,  from  its  other  end,  into  and  through  the  other  of  those 
tubes.  The  Supreme  Court  held  the  patent  to  have  been 
infringed  by  the  Eichardson  syringe,  in  which  the  bulb  was 
placed  above  the  axial  line  of  the  two  flexible  tubes,  and 
received  the  enema  from  one  of  those  tubes  near  the  point 
where  it  discharged  the  same  into  the  other. 

§  367.  The  American  Diamond  Hock  Boring  Co.  v.  The 


1  Ives  v.  Hamilton,  92  U.  S.  431,          J  Morey  v.  Lockwood,  8  Wallace, 
1875.  230,  1868 


CHAP.  XVI.]  INFRINGEMENT.  287 

Sullivan  Machine  Co.,1  was  a  case  involving  a  patent  for  a 
rock-boring  implement,  consisting  of  a  hollow  metal  boring 
head  armed  with  diamonds,  and  which  when  moved  with  a 
combined  rotary  and  forward  motion,  bored  an  annular  hole 
into  rock,  leaving  a  central  core  to  be  subsequently  broken 
by  a  wedge  and  then  readily  removed.  The  defendant  used 
a  rock-boring  tool,  consisting  of  a  hollow  metal  boring  head, 
but  having  its  bottom  partly  plugged  so  as  to  leave  two 
holes  elsewhere  than  in  the  centre  of  the  head,  and  having 
a  convex  surface  armed  with  diamonds.  This  tool  bored  a 
simple  hole  into  rock  without  leaving  any  core  to  be  after- 
ward removed.  The  change  of  form  involved  a  modification 
of  the  action,  and  perhaps  a  modification  of  the  utility  of 
the  invention,  but  it  was  held  not  to  avoid  infringement  of 
a  claim  which  did  not  mention  the  annular  form  of  the 
implement. 

§  368.  Elizabeth  v.  Pavement  Co.*  was  a  case  based  on  the 
Nicholson  pavement  patent.  That  pavement  consisted  pri- 
marily of  rows  of  parallel-sided  wood  blocks,  set  endwise, 
on  a  continuous  foundation,  the  rows  being  separated  by 
parallel-sided  strips  of  board,  set  edgewise  between  them, 
and  resting  on  the  same  foundation,  and  about  half  as  wide 
as  the  blocks  were  long.  The  defendant  made  a  pavement 
differing  from  the  Nicholson  in  nothing,  except  that  the 
sides  of  the  strips  were  not  parallel  with  each  other,  the 
strips  being  thicker  at  the  top  than  at  the  bottom  edge,  and 
except  that  the  upper  angles  of  the  strips  were  let  into  cor- 
responding notches  cut  in  the  sides  of  the  blocks.  The 
Supreme  Court  held  that  though  this  change  in  the  form  of 
the  blocks  and  of  the  strips  might  constitute  an  improve- 
ment in  point  of  utility,  it  did  not  operate  to  avoid  infringe- 
ment. 

§  369.  Patents  for  compositions  of  matter  give  rise  to 
questions  of  infringement  somewhat  peculiar  to  themselves. 

1  American  Diamond  Rock  Bor-          2  Elizabeth  v.  Pavement  Co.  97  U. 
ing  Co.  c.  Sullivan  Machine  Co.  14      S.  137,  1877. 
Blatch.  119,  1877. 


288  INFRINGEMENT.  [CHA£.  XVI. 

Infringement  depends,  in  sucli  cases,  upon  sameness  or 
equivalence  of  ingredients,  and  upon  substantial  sameness 
of  the  proportions  of  those  ingredients.  Omission  of  one 
or  more  of  the  ingredients  of  a  patented  composition  of 
matter,  avoids  infringement,  as  truly  as  omission  of  one  of 
its  parts  avoids  infringement  of  a  patent  for  a  combination 
of  mechanical  devices.1  Addition  to  a  patented  composition 
of  matter,  of  an  ingredient  which  the  patent  purposely 
avoided,  and  which  when  added  substantially  changes  the 
character  of  the  composition,  also  avoids  infringement.11 
But  an  addition  which  results  in  no  substantial  change  of 
character,  and  which  was  made  merely  for  the  purpose  of 
an  attempt  to  evade  the  patent,  will  not  have  that  effect.3 

§  370.  Substitution  of  one  equivalent  for  another,  in  a 
patented  composition  of  matter,  is  generally  as  ineffectual 
to  avoid  infringement  as  is  like  substitution  in  a  machine. 
An  equivalent  for  one  ingredient  of  a  patented  composition 
of  matter  is  anything  which  in  that  composition  performs 
the  same  function  as  that  ingredient.4  In  the  case  cited,  it 
was  held  that  chloride  of  zinc  in  solution  was  an  equivalent 
of  common  dry  salt,  in  the  composition  of  matter  covered 
by  the  patent  at  bar,  "  because  in  the  process  of  manufacture 
they  practically  produce  the  same  results."  No  attention 
was  given  to  the  question  whether  they  produced  that  result 
in  substantially  the  same  way.  So  also  the  Supreme  Court 
has  held  that  the  term  "  equivalent "  means  "  equally  good  " 
when  it  refers  to  the  ingredients  of  compositions  of  matter.8 
Where  the  composition  of  matter  involved,  is  a  compound 
of  metals,  an  equivalent  of  either  of  those,  is  another  metal 
having  similar  properties,  and  producing  substantially  the 
same  effect  in  that  composition.6 

§  371.  A  substituted  ingredient  may  perform  the  required 

1  Otley  v.  Watkins,  36  Fed.  Rep.  *  Woodward  v.  Morrison,  1  Hol- 
324,  1888.  mes,  131,  1872. 

2  Byam  v.  Eddy,  2  Blatch.  521,  8  Tyler  v.  Boston,  7  Wallace,  330, 
1853.  1868. 

3  Rich  v.  Lippincott,  2  Fisher,  6,  *  Matthews  «.   Skates,   1    Fisher, 
1853.  609,  1860. 


CHAP.  XVI.]  INFRINGEMENT.  289 

function  better  than  the  patented  ingredient,  and  may  per- 
form that  function  in  a  somewhat  different  manner,  and 
still  be  an  equivalent  for  the  latter.1  In  the  case  cited  the 
patent  covered  a  compound  of  nitro-glycerine  and  absorbent 
matter,  of  which  infusorial  earth  was  stated  to  be  the  pre- 
ferred, variety.  The  absorbent  matter,  when  mixed  with 
three  times  its  weight  of  nitro-glycerine,  absorbed  the  whole, 
and  still  retained  the  form  of  a  powder.  This  compound 
made  dynamite.  The  defendant's  compound  consisted  of 
nitro-glycerine  and  mica  scales  mixed  in  nearly  equal  pro- 
portions, the  mica  scales  not  absorbing  the  nitro-glycerine, 
but  merely  holding  it  in  suspension  upon  their  surfaces. 
This  compound  was  called  mica  powder.  Its  use  at  the 
Hoosac  Tunnel  demonstrated  its  superiority  over  dynamite, 
in  point  of  efficiency,  economy,  and  safety ;  and  there  is 
evidently  a  difference  between  a  powder  which  absorbs  a 
liquid  as  in  minute  capillary  tubes,  and  one  which  does  not 
absorb,  but  which  carries  a  liquid  upon  the  surfaces  of  its 
particles.  But  notwithstanding  these  differences  Judge 
SHEPLEY  in  an  accomplished  opinion,  held  the  mica  powder 
to  infringe  the  dynamite  patent.  So  also,  in  a  later  case  on 
the  same  patent,8  the  same  judge  held  a  certain  gunpowder 
to  be  an  equivalent  of  the  infusorial  earth,  because  it  per- 
formed every  function  of  the  latter  substance,  though  it 
also  performed  the  additional  function,  at  the  time  of  the 
explosion  of  the  compound,  of  co-operating  with  the  nitro- 
glycerine in  rending  the  rock,  instead  of  remaining,  like  in- 
fusorial earth,  an  inert  substance.  The  doctrine  which  re- 
sults from  this  case  is  that  one  ingredient  is  an  equivalent 
of  another  in  a  composition  of  matter,  if  it  performs  the 
same  function,  even  though  it  also  performs  another  func- 
tion, which  that  other  is  wholly  incompetent  to  accomplish. 
§  372.  When  a  patent  expressly  states  that  the  composi- 
tion of  matter  which  it  covers,  does  not  include  a  specified 
ingredient  of  similar  compositions,  the  substitution  of  that 

1  Atlantic   Giant  Powder  Co.   n.          2  Atlantic   Giant  Powder  Co.    v. 
Mowbray,  2  Bann.  &  Ard.  447, 1876.       Goodyear,  3  Bann.  &  Ard.  161, 1877. 


290  INFRINGEMENT.  [CHAP.  XVI. 

ingredient  for  one  of  those  covered  by  the  patent,  is  enough 
to  avoid  infringement,  even  though  the  two  ingredients  per- 
form the  same  function  in  that  composition  of  matter.  But 
this  does  not  amount  to  saying  that  the  two  things  are  not 
equivalents.  It  merely  amounts  to  the  doctrine  that  a  pat- 
entee may  disclaim  a  particular  equivalent  if  he  chooses.1 
And  where  a  particular  construction  is  disclaimed  that  dis- 
claimer is  binding  even  if  it  was  unnecessary.2 

§  373.  Changes  of  the  proportions  of  the  ingredients  of  a 
composition  of  matter  will  not  avoid  infringement  of  a  pat- 
ent for  such  a  composition,  where  those  changes  do  not 
affect  its  essential  character  in  any  way  more  important 
than  to  increase  its  bulk  more  than  they  increase  its  cost.* 

§  374.  The  doctrines  of  the  last  five  sections  appear  to  be 
applicable  to  compositions  of  matter  in  general,  whether 
they  consist  of  chemical  unions,  or  of  mechanical  mixtures, 
or  of  metal  amalgams.  Jurisprudence  will  doubtless  follow 
science,  if  science  hereafter  shows  any  reason  for  distinguish- 
ing between  the  different  classes  of  compositions  of  matter 
in  respect  of  questions  of  infringement ;  but  no  such  dis- 
tinctions are  yet  traceable  in  the  adjudicated  cases. 

§  375.  A  design  patent  is  infringed  by  any  design  which,  to 
general  observers  interested  in  the  subject,  or  to  purchasers 
of  things  of  similar  design,  has  the  same  appearance  as  that 
of  the  design  covered  by  the  patent.4  The  fact  that  an  an- 
alysis of  two  forms  of  design  discloses  differences  between 
them,  is  therefore  insufficient  to  show  lack  of  that  substan- 
tial identity  of  appearance,  which  constitutes  infringement. 
Such  a  question  of  identity  is  to  be  decided  on  the  basis  of 
the  opinions  of  average  observers,  and  not  upon  the  basis  of 
the  opinions  of  experts. 

§  376.  The  comparative  utility  of  the  plaintiff's  and  the 


1  Byam  v.  Farr,  1  Curtis,  260,  1852.  528,  1871 ;  Perry  v.  Starrelt,  3  Bann. 

*  Cartridge  Co.  ®.  Cartridge  Co.  &  Ard.  485,  1878;  Dryfoos  v.  Fried- 

112  U.  S.  624,  1884.  man,  18  Fed.  Rep.  824,  1884;  Tom- 

8  Eastman  v.  Hinckel,  5  Bann.  &  kinson  v.  Mfg.  Co.  23  Fed.  Rep.  895, 

Ard.  1,  1879.  1884. 

4  Gorham  v.  White,  14  Wallace. 


CHAP.   XVI.]  INFRINGEMENT.  291 

defendant's  process,  machine,  manufacture,  or  composition 
of  matter,  is  not  alone  a  criterion  of  infringement ;  because 
the  observed  superiority  of  one  over  the  other  may  have 
arisen  from  superiority  of  the  materials  or  of  the  workman- 
ship used  in  constructing  the  specimens  under  inspection. 
Indeed  it  has  been  held  that  the  superiority  or  inferiority 
of  utility  in  a  defendant's  machine,  does  not  necessarily  im- 
port non-infringement,  eVen  where  it  can  be  traced  to  slight 
differences  in  mode  of  operation.1  No  man  is  permitted  to 
evade  a  patent  by  simply  constructing  the  patented  thing 
so  imperfectly  that  its  utility  is  diminished.3  On  the  other 
hand,  a  defendant's  machine  may  be  better  than  that  covered 
by  the  patent  in  suit ;  but  if  that  superiority  resulted  from 
some  addition  to  the  latter,  it  will  have  no  tendency  to  avoid 
infringement.3  Nor  is  infringement  avoided  by  the  fact  that 
the  defendant  constructed  and  used  his  machine  to  produce 
one  of  the  simpler  of  the  forms  of  things  produced  by  the 
machine  of  the  plaintiff,  and  was  thus  enabled  to  produce  a 
larger  number  in  an  equal  space  of  time.*  The  superiority 
or  inferiority  of  a  defendant's  process,  machine,  manufact- 
ure or  composition  of  matter,  as  compared  with  that  covered 
by  a  patent  upon  which  he  is  sued,  can  generally  be  traced 
to  its  cause.  When  that  can  be  done,  attention  should  be 
taken  from  the  difference  in  utility,  to  the  cause  of  that  dif- 
ference. Non-infringement  will  result  if  that  cause  is  such 
a  difference  in  function,  mode  of  operation,  or  character  of 
construction,  as  is  of  itself  sufficient  to  justify  that  conclu- 
sion. In  some  cases,  however,  it  may  not  be  possible  to  as- 
certain the  cause  of  the  observed  difference  of  utility  between 
two  inventions,  or  to  detect  the  existence  of  any  such  cause 
otherwise  than  by  its  effects.  In  such  a  case,  a  decided 
difference  of  utility  is  evidence  tending  to  show  substantial 

1  Waterbury  Brass  Co.  v.  Miller,  9         3  Pitts  v.  Wemple,   1  Bissell,   87, 
Blatch.  77,  1871 ;  Shaver  v.  Mfg.  Co.      1855;  Carter  v.  Baker,  1  Sawyer,  512, 
30  Fed.  Rep.  72,  1887.  1871. 

2  Chicago    Fruit    House    Co.    v.          *  Blan  chard  v.  Beers,  2  Blatch. 
Busch,  2  Bissell.  472,  1871;  Roberts      420,  1852. 

v.  Harnden,  2  Clif.  506,  1865. 


292  INFRINGEMENT.  [CHAP.  XVI. 

difference  between  the  characters  of  the  two  inventions.1 
When  evidence  of  difference  of  utility  between  a  plaintiff's 
invention  and  a  defendant's  doings,  is  introduced  on  an  issue 
of  infringement,  it  must  be  considered  only  in  connection 
with  all  the  other  evidence  upon  that  subject."  If  considered 
alone,  it  is  likely  to  mislead,  because  difference  of  utility 
often  springs  from  causes  which  do  not  constitute  sub- 
stantial difference  of  invention. 

§  377.  To  constitute  an  infringement  of  a  patent,  it  is  not 
necessary  that  the  infringer  should  have  known  of  the  ex- 
istence of  the  patent  at  the  time  he  infringed  it ; 3  or,  know- 
ing of  its  existence,  it  is  not  necessary  that  he  should  have 
known  his  doings  to  constitute  an  infringement.4 

1  Many®.  Sizer,  1  Fisher,  27.  1849.  Rep.  520,  1884;  Royer  v.  Coupe,  29 

2  Singer  ».  Walmsley,   1   Fisher,  Fed.  Rep.  361,  1886;  Bate  Refriger- 
585,  1860.  ating  Co.  v.   Gillett,  31   Fed.   Rep. 

3  Parker  v.  Haworth,  4  McLean,  815,  1887. 

373,  1848 ;    Matthews  v.   Skates,  1          « Parker  v.   Hulme,  1  Fisher  54, 
Fisher,   608,     1860;    National    Car      1849. 
Brake  Shoe  Co.  «.  Mfg.  Co.  19  Fed. 


CHAPTEE  XVH. 


COURTS  PARTIES  AND  CAUSES. 


378.  Introductory  explanation. 

379.  Jurisdiction  of  United  States 
courts  of  first  resort  in  patent 
cases. 

380.  Question  of  the  jurisdiction  of 
State    courts    in    patent    cases 
stated. 

381.  Supported  in    the    affirmative 
from  ALEXANDER  HAMILTON. 

382.  Supported  in  the  negative  from 
Justice  STORY. 

383.  Supported    in    the  affirmative 
from  Justice  WASHINGTON. 

384.  Supported  in  the  negative  from 
Chancellor  KENT. 

385.  Supported  in  the  negative  from 
Justice  FIELD. 

386.  Considered  in  the  light  of  all 
the  foregoing  opinions. 

387.  Supported  in  the  negative  by 
the  text- writer. 

388.  Jurisdiction    of    State    courts 
over  controversies  growing  out 
of   contracts   relevant   to    pat- 
ents. 

389.  Jurisdiction  of  individual  Unit- 
ed States  courts  of  first  resort 
in  patent  cases. 

390.  Qualifications  of  the  rule  of  the 
last  section. 

391.  Jurisdiction  of  the   Court  of 
Claims. 

392.  Question  of  the  jurisdiction  of 
the  Court  of  Claims  over  causes 
of  action  based  on  unauthorized 
making,  using,  or  selling  by  the 


United  States  Government  of 
specimens  of  a  patented  process 
or  thing. 

393.  Question  of  the  jurisdiction  of 
United    States    Circuit    Courts 
over    actions,    brought  against 
agents   of    the    United    States 
Government,  and  based  on  unau- 
thorized making,  using,  or  sell- 
ing, by  those  agents,  on  behalf 
of  the  government,   of  speci- 
mens of  a  patented  process  or 
thing. 

394.  Who  may  be  a  plaintiff  or  com- 
plainant in  a  patent  action. 

395.  Who  may  be  plaintiff  or  com- 
plainant in  an  action  based  on 
an  assigned  accrued  right  of  ac- 
tion for  infringement. 

396.  Executors  and  administrators 
as  plaintiffs  and  complainants. 

397.  Assignees  of  executors  or  ad- 
ministrators   as    plaintiffs  and 
complainants. 

398.  Attorneys  in  fact  cannot    be 
nominal  plaintiffs  or  complain- 
ants. 

399.  Owners  in    common  as  joint 
plaintiffs  or  complainants. 

400.  Licensees  cannot  be  nominal 
plaintiffs,  nor  sole  nominal  com- 
plainants. 

401.  Who  may  be  made  a  defendant 
in  a  patent  action. 

402.  Minors,  married  women,  and 
lunatics  as  defendants. 


294 


COURTS   PARTIES  AND   CAUSES.          [CHAP.  XVII. 


403.  Agents,  salesmen,  and  employ- 
ees as  defendants. 

404.  Employers  as  defendants. 

405.  Persons  as  defendants  who  have 
caused  others  to  infringe. 

406.  Joint  inf  ringers  as  defendants. 

407.  What  facts  constitute  joint  in- 
fringement. 

408.  Partners  as  defendants. 

409.  Private  corporations  as  defend- 
ants. 

410.  Officers,  directors,  and  stock- 
holders of  corporations  as  de- 
fendants. 


411.  The  same  subject  continued. 

41 2.  Stockholders  of  corporations. 

413.  Officers  of  corporations. 

414.  Directors  of  corporations. 

415.  Statutory  liability  of  officers, 
directors,   and  stockholders  of 
corporations. 

416.  Consolidated  corporations  as  de- 
fendants in  actions  based  on  in- 
fringements committed  by  their 
constituent  corporations. 

417.  Causes  of  action  based  on  a 
plurality  of  patents,  or  on  both 
terms  of  an  extended  patent. 


§  378.  THE  foregoing  part  of  this  text-book  treats  of  the 
rights  of  inventors  and  patentees,  and  of  their  assignees, 
grantees,  licensees,  and  legal  representatives ;  and  also 
treats  of  the  wrongs  which  are  committed  when  those  rights 
are  infringed.  The  remaining  part  explains  the  remedies 
which  may  be  invoked,  sometimes  to  prevent,  and  some- 
times to  repair  such  wrongs  of  infringement.  The  present 
chapter  is  devoted  to  the  courts  which  may  originally  ad- 
minister those  remedies ;  and  to  the  parties  who  may  in- 
voke them,  and  against  whom  they  may  be  invoked ;  and  to 
the  causes  of  action  which  justify  patent  litigation  between 
those  parties  in  those  courts. 

§  379.  The  Circuit  Courts  of  the  United  States  have  origi- 
nal jurisdiction,  regardless  of  the  amount  involved,  of  all 
suits  at  law  or  in  equity  arising  under  the  patent  laws  of 
the  United  States.1  The  few  District  Courts  of  the  United 
States  which  have  Circuit  Court  powers,  have  the  same 
jurisdiction  in  patent  cases  that  the  Circuit  Courts  have  in 
other  districts.2  The  same  jurisdiction  belongs  also  to  the 
District  Courts  of  the  Territories  of  the  United  States  ; s  and 
to  the  Supreme  Court  of  the  District  of  Columbia.4 


1  Revised  Statutes,  Section  629; 
Milter-Magee  Co.  v.  Carpenter,  34 
Fed.  Rep.  434, 1888. 

3  Revised  Statutes,  Section  571, 
as  amended  January  31,  1877,  19 
Statutes.atXarge,  Ch..  41,  p.  230. 


3  Revised  Statutes,  Section  1910, 
and  Section  1911,  as  amended  June 
29,  1876,  19  Statutes  at  Large,  Ch. 
154.  p.  62. 

4  Sections  760  and  764  of  the  Re- 
vised Statutes  relating  to  the  District 


CHAP.  XVII.]          COURTS   PARTIES  AND   CAUSES.  2(,i5 

§  380.  Whether  State  courts  have  any  jurisdiction  of 
actions  for  infringements  of  patents,  is  a  question  of  great 
interest,  upon  which  it  is  not  possible,  at  this  writing,  to 
give  a  positive  answer.  Under  the  Revised  Statutes,  the 
question  was  clearly  answerable  in  the  negative  ; '  but  in 
1875  Congress  enacted  a  statute  which  provided :  "  That 
the  Circuit  Courts  of  the  United  States  shall  have  original 
cognizance,  concurrent  with  the  courts  of  the  several  States, 
of  all  suits  of  a  civil  nature  at  common  law  or  in  equity, 
where  the  matter  in  dispute  exceeds,  exclusive  of  costs,  the 
sum  or  value  of  five  hundred  dollars,  and  arising  under  the 
Constitution  or  laws  of  the  United  States."*  The  constitu- 
tional provision  relevant  to  the  subject  is  that :  "  The  judi- 
cial Power  of  the  United  States,  shall  be  vested  in  one  Su- 
preme Court,  and  in  such  inferior  Courts  as  the  Congress 
may  from  time  to  time  ordain  and  establish." 3  In  view  of 
this  organic  law,  it  is  certain  that  Congress  cannot  confer 
any  judicial  power  upon  any  other  than  Federal  courts.4 
Therefore  the  statute  of  1875  could  not  have  such  an  opera- 
tion, even  if  it  purported  to  do  so,  and  it  does  not  so  pur- 
port. What  it  says  about  concurrent  jurisdiction  of  the 
State  courts,  is  by  way  of  recital,  rather  than  by  way  of 
grant.  It  appears  to  assume,  that  in  the  absence  of  con- 
gressional prohibition,  the  State  courts  would  inherently 
have  concurrent  jurisdiction,  and  it  removes  the  prohibition 
contained  in  the  Ee vised  Statutes.6 

The  real  question  therefore  is,  whether,  in  the  absence  of 
congressional  prohibition,  State  courts  have  jurisdiction  of 
actions  arising  under  the  Constitution  and  laws  of  the  United 
States.  Upon  that  question,  the  great  constitutional  law- 
yers who  have  treated  it,  differ  in  opinion. 

§  381.  The  first  in  point  of  time,  was  that  author  whose 

of  Columbia.     Cochrane  v.  Deener,  States,  Article  3,  Section  1. 

94  U.  S.  782,  1876.  *  Martin   v.    Hunter's   Lessee,   1 

1  Revised  Statutes,  Section  711.  Wheaton,   330,   1816  ;    Houston  t>. 

*  18  Statutes  at  Large,  Part  3,  Ch.  Moore,  5  Wheaton,  27,  1820. 

187,  Section  1,  p.  470.  s  Revised  Statutes,  Section  711. 

8  Constitution    of     the     United 


296  COURTS   PARTIES  AND   CAUSES.  [CHAP.  XVII. 

opinions  on  law  points  never  had  the  technical  force  of 
judicial  decisions,  but  whose  intellect  was  so  extensive  in 
its  grasp,  and  so  powerful  in  its  operation,  that  whatever 
he  wrote  in  the  Federalist,  is  worthy  to  be  cited  on  the 
most  weighty  occasions.  In  the  eighty-second  number  of 
that  splendid  work,  ALEXANDER  HAMILTON  treated  the  sub- 
ject now  under  review,  and  treated  it  in  the  following 
terms  : 

"  The  only  thing  in  the  proposed  constitution,  which 
wears  the  appearance  of  confining  the  causes  of  federal 
cognizance  to  the  federal  courts,  is  contained  in  this  pas- 
sage :  '  The  judicial  power  of  the  United  States  shall  be. 
vested  in  one  supreme  court,  and  in  such  inferior  courts  as 
the  congress  shall  from  time  to  time  ordain  and  establish.' 
This  might  either  be  construed  to  signify,  that  the  supreme 
and  subordinate  courts  of  the  union  should  alone  have  the 
power  of  deciding  those  causes,  to  which  their  authority 
is  to  extend ;  or  simply  to  denote,  that  the  organs  of  the 
national  judiciary  should  be  one  supreme  court,  and  as 
many  subordinate  courts  as  Congress  should  think  proper 
to  appoint ;  in  other  words,  that  the  United  States  should 
exercise  the  judicial  power  with  which  they  are  to  be  in- 
vested, through  one  supreme  tribunal,  and  a  certain  number 
of  inferior  ones,  to  be  instituted  by  them.  The  first  ex- 
cludes, the  last  admits,  the  concurrent  jurisdiction  of  the 
state  tribunals  :  and  as  the  first  would  amount  to  an  aliena- 
tion of  state  power  by  implication,  the  last  appears  to  me 
the  most  defensible  construction." 

"  But  this  doctrine  of  concurrent  jurisdiction,  is  only 
clearly  applicable  to  those  descriptions  of  causes,  of  which 
the  state  courts  have  previous  cognizance.  It  is  not  equally 
evident  in  relation  to  cases,  which  may  grow  out  of,  and  be 
peculiar  to,  the  constitution  to  be  established  ;  for  not  to 
allow  the  state  courts  a  right  of  jurisdiction  in  such  cases, 
can  hardly  be  considered  as  the  abridgement  of  a  pre- 
existing .authority.  I  mean  not  therefore  to  contend  that 
the  United  States,  in  the  course  of  legislation  upon  the 
objects  intrusted  to  their  direction,  may  not  commit  the 


CHAP.  XVII.]          COURTS    PARTIES   AND    CAUSES.  297 

decision  of  causes  arising  upon  a  particular  regulation,  to 
the  federal  courts  solely,  if  such  a  measure  should  be 
deemed  expedient :  but  I  hold  that  the  State  courts  will  be 
divested  of  no  part  of  their  primitive  jurisdiction,  further 
than  may  relate  to  an  appeal ;  and  I  am  even  of  opinion 
that  in  every  case  in  which  they  were  not  expressly  ex- 
cluded by  the  future  acts  of  the  national  legislature,  they 
will  of  course  take  cognizance  of  the  causes  to  which  those 
acts  may  give  birth.  This  I  infer  from  the  nature  of  judi- 
ciary power,  and  from  the  general  genius  of  the  system. 
The  judiciary  power  of  every  government  looks  beyond  its 
own  local  or  municipal  la'ws,  and  in  civil  cases  lays  hold  of 
all  subjects  of  litigation  between  parties  within  its  jurisdic- 
tion, though  the  causes  of  dispute  are  relative  to  the  laws 
of  the  most  distant  part  of  the  globe.  Those  of  Japan,  not 
less  than  of  New  York,  may  furnish  the  objects  of  legal 
discussion  to  our  courts.  When  in  addition  to  this  we  con- 
sider the  State  governments  and  the  national  governments, 
as  they  truly  are,  in  the  light  of  kindred  systems,  and  as 
parts  of  one  whole,  the  inference  seems  to  be  conclusive, 
that  the  State  courts  would  have  a  concurrent  jurisdiction, 
in  all  cases  arising  under  the  laws  of  the  union,  where  it 
was  not  expressly  prohibited." 

§  382.  Justice  STORY,  on  the  other  hand,  delivered  an 
opinion  of  the  Supreme  Court  in  1816,  in  which  he  said  that : 
"  It  can  only  be  in  those  cases  where,  previous  to  the  con- 
stitution, State  tribunals  possessed  jurisdiction  independent 
of  national  authority,  that  they  can  now  constitutionally 
exercise  a  concurrent  jurisdiction."  '  The  same  great  jurist 
also  held  the  same  opinion  in  his  Commentaries  on  the 
Constitution.2 

§  383.  Justice  WASHINGTON,  on  the  contrary,  held  to  the 
views  of  HAMILTON.  When  delivering  the  leading  opinion 
of  the  Supreme  Court,  in  a  case  which  was  decided  in  1820, 
he  cited  HAMILTON'S  opinion  and  said :  "  I  can  discover,  I 

1  Martin  D.  Hunter's  Lessee,  1  *  Story  on  the  Constitution,  Sec- 
Wheaton,  337,  1816.  tion  1754. 


298  COURTS   PARTIES   AND    CAUSES.  [CHAP.  XVII. 

confess,  nothing  unreasonable  in  this  doctrine  ;  nor  can  I 
perceive  any  inconvenience  which  can  grow  out  of  it,  so 
long  as  the  power  of  Congress  to  withdraw  the  whole,  or 
any  part  of  those  cases,  from  the  jurisdiction  of  the  State 
courts,  is,  as  I  think  it  must  be,  admitted."  ' 

§  384.  Chancellor  KENT,  in  his  Commentaries,  reviewed 
the  opinions  of  HAMILTON,  STORY  and  WASHINGTON,  and  in 
conclusion  stated  his  own  view  on  the  subject  to  be  that : 
"  Without  an  express  provision  to  the  contrary,  the  State 
courts  will  retain  concurrent  jurisdiction,  in  all  cases  where 
they  had  jurisdiction  originally  over  the  subject-matter."2 
Inasmuch  as  patent  suits  are  outside  of  this  category,  the 
opinion  of  KENT  is  fairly  citable  with  that  of  STORY  on  the 
negative  side  of  the  question  now  under  review. 

§  385.  Justice  FIELD,  in  delivering  a  Supreme  Court 
opinion  in  1866,  quoted  extensively  from  the  opinion 
delivered  by  Justice  STORY  in  1816,  and  said  that  the  court 
agreed  fully  with  his  conclusion,  that  the  judicial  power  of 
the  United  States  is,  in  some  cases,  unavoidably  exclusive 
of  all  State  authority,  and  that  in  all  other  cases,  it  may  be 
made  so  at  the  election  of  Congress.3  In  a  later  case  the 
same  justice  said,  that :  "  In  some  cases,  from  their  character, 
the  judicial  power  is  necessarily  exclusive  of  all  State 
authority  ;  in  other  cases  it  may  be  made  so  at  the  option 
of  Congress,  or  it  may  be  exercised  concurrently  with  that 
of  the  States." 4  In  a  still  later  case  the  same  Justice 
covered  the  point  in  explicit  terms,  saying  that :  "  Some 
cases  there  are,  it  is  true,  in  which,  from  their  nature,  the 
judicial  power  of  the  United  States,  when  invoked,  is  exclu- 
sive of  all  State  authority.  Such  are  cases  in  which  the 
United  States  are  parties,  cases  of  admiralty  and  maritime 
jurisdiction,  and  cases  for  the  enforcement  of  the  rights  of 
inventors  and  authors  under  the  laws  of  Congress."  * 

1  Houston  v.  Moore,  5  Wheaton,  429,  1866. 

26,  1820.  *  Railroad  Co.  v.  Wnitton,  13  Wal- 

3  1  Kent's  Commentaries,  Lecture  lace,  288,  1871. 

XVIII.  p.  400.  •  Gaines  t>.  Fuentes,  92  U.  S.  17, 

3  The  Moses  Taylor,  4  Wallace,  1875. 


CHAP.  XVII.]          COURTS   PARTIES  AND   CAUSES.  299 

§  386.  But  neither  of  the  foregoing  five  Supreme  Court 
cases,  is  a  true  precedent  on  the  question ;  for  though  that 
question  was  recognized  and  answered  in  them  all,  it  was 
not  necessarily  involved  in  either.  The  remarks  which 
those  cases  contain  upon  the  subject  must  therefore  rest 
for  their  weight  as  authority,  upon  the  high  character  of 
the  judges  who  delivered  them,  and  not  on  that  of  the  court 
which  decided  the  cases.1  On  the  affirmative  of  the  issue 
we  have  the  opinion  and  the  reasons  of  HAMILTON,  indorsed 
by  Justice  WASHINGTON.  On  the  negative,  we  have  the 
opinions  of  Justice  STORY,  Chancellor  KENT  and  Justice 
FIELD  ;  but  those  opinions  are  not  accompanied  by  the 
reasoning  out  of  which  they  arose.  Therefore  it  may  not 
be  amiss  to  examine  the  point  fundamentally. 

§  387.  It  cannot  be  claimed  that  the  Constitution  of  the 
United  States  confers  any  jurisdiction  on  any  State  court ; 
and  it  is  clear  that  Congress  has  no  power  to  do  so.2  There- 
fore, if  such  courts  have  jurisdiction  of  patent  suits,  that 
jurisdiction  must  be  founded  on  some  general  principle  of 
jurisprudence,  existing  outside  of  written  edicts,  or  upon 
the  general  genius  of  our  composite  republic.  HAMILTON 
inferred  the  jurisdiction  from  both  these  considerations,  and 
he  assigned  no  other  ground  therefor. 

He  stated  his  first  premise  in  the  following  terms  :  "  The 
judiciary  power  of  every  government  looks  beyond  its  own 
local  or  municipal  laws,  and  in  civil  cases  lays  hold  of  all 
subjects  of  litigation  between  parties  within  its  jurisdiction, 
though  the  causes  of  dispute  are  relative  to  the  laws  of  the 
most  distant  part  of  the  globe.  Those  of  Japan,  not  less 
than  of  New  York,  may  furnish  the  objects  of  legal  discus- 
sion to  our  courts."  But  this  premise  seems  to  be  broader 
than  the  principles  of  private  international  law  will  warrant. 
It  is  a  maxim  of  that  law,  that  whatever  force  the  laws  of 
one  country  have  in  another,  depends  solely  upon  the  juris- 


1  United  States  «.  Lee,  106  U.  S.      Wheaton,    330,  1816  ;    Houston    t>. 
217,  1882.  Moore,  5  Wheaton,  27,  1820. 

2  Martin    «.    Hunter's    Lessee,    1 


300  COUETS   PARTIES   AND    CAUSES.  [CHAP.  XVII. 

prudence  and  polity  of  the  latter.1  Eights  originating  in 
Japan,  may  be  enforced  by  the  courts  of  New  York,  pro- 
vided similar  rights  exist  under  the  laws  of  that  State ;  but 
HAMILTON  was  for  once  in  error,  when  he  wrote  that  the 
judiciary  power  of  every  government  lays  hold  of  all  sub- 
jects of  litigation  between  parties  within  its  jurisdiction. 
No  rights  are  more  universally  recognized  throughout  the 
world,  than  those  which  grow  out  of  private  contracts  ;  but 
not  every  private  contract,  made  in  Japan,  and  legally  en- 
forceable there,  is  enforceable  in  the  courts  of  New  York. 
For  example,  those  courts  can  enforce  no  contract  which  is 
contrary  to  what  the  citizens  and  government  of  New  York 
regard  as  good  morals ;  but  the  standard  of  good  morals  in 
New  York  is  different  from  that  which  prevails  in  Japan. 
There  is  said  to  be  a  statute  in  Japan  regulating  the  price 
at  which  girls  are  sold  by  their  parents.  There  is  no  such 
statute  in  New  York,  and  no  right  of  action  growing  out  of 
any  such  statute,  can  be  enforced  in  the  courts  of  that  State, 
because  the  polity  of  that  State  does  not  include  rights  of 
property  in  daughters.  Though  for  an  entirely  different 
reason,  it  is  equally  true  that  the  polity  of  the  State  of  New 
York  does  not  include  rights  of  property  in  inventions ;  and 
such  rights,  being  outside  of  its  polity,  are  outside  of  the 
judicial  cognizance  of  its  courts.  Consistently  with  these 
reasons,  Justice  FIELD  remarked  that  cases  for  the  enforce- 
ment of  rights  of  inventors  and  authors,  are,  from  their 
nature,  exclusively  cognizable  in  the  United  States  courts.* 
HAMILTON  stated  his  second  premise  in  the  following  terms: 
"  When  we  consider  the  State  governments  and  the  national 
government,  as  they  truly  are,  in  the  light  of  kindred  sys- 
tems, and  as  parts  of  one  whole,  the  inference  seems  to  be 
conclusive,  that  the  State  courts  would  have  concurrent 
jurisdiction,  in  all  cases  arising  under  the  laws  of  the 
union,  where  it  was  not  expressly  prohibited."  This  reason 
appears  to  be  faulty  in  both  of  its  branches.  It  is  not  cer- 


1  Story  on  Conflict  of  Laws,  Sec-         *  Gaines  «.  Fuentes,  92  U.  S.  17, 
tion  23.  1875. 


CHAP.   XVII.]  COURTS   PARTIES   AND   CAUSES.  301 

tain  that  kindred  governments  will  always  enforce  each, 
other's  statutes.  Governments,  like  persons,  may  be  kin- 
dred and  still  be  substantially  different  in  the  polity  which 
controls  their  conduct.  So  also,  the  fact  that  the  State  and 
national  governments  form  parts  of  one  whole  does  not  lead 
to  the  conclusion  that  each  part  can  naturally  do  whatever 
any  other  part  can  accomplish.  We  are  indeed  one  republic, 
but  we  are  a  republic  of  departments.  Some  public  business 
belongs  to  the  national,  and  some  to  the  State  governments, 
and  some  can  be  performed  by  either.  The  fact  of  the 
unity  of  the  republic  has  no  tendency  to  prove  what  are  the 
details  of  that  distribution.  No  State  can  perform  the 
functions  of  the  nation,  and  logically  allege  the  fact  that  it 
is  a  part  of  the  nation  to  be  a  sufficient  warrant  for  its  ex- 
ercise of  national  jurisdiction. 

If  the  argument  of  this  section  is  correctly  drawn  from 
correct  foundations,  it  will  follow  that  HAMILTON'S  opinion 
is  not  supported  by  his  reasons ;  and  as  no  other  reasons 
seem  ever  to  have  been  given  for  the  jurisdiction  of  State 
courts  over  patent  suits,  it  is  probably  safe  to  conclude  that 
those  courts  have  no  such  jurisdiction. 

§  388.  Actions  brought  to  enforce  contracts  between  pri- 
vate parties,  relevant  to  patent  rights,  are  not  actions  aris- 
ing under  the  patent  laws  of  the  United  States ;  and  there- 
fore are  not  cognizable  as  such,  in  the  United  States  courts.1 
And  actions  to  set  aside  such  contracts  fall  in  the  same 
category.2  These  rules  of  law  are  well  established,  and  are 
unchallenged.  But  a  bare  majority  of  a  small  quorum  of 
the  Supreme  Court  has  gone  further,  and  in  spite  of  a 
vigorous  dissent  from  the  minority,  has  held  another  doc- 
trine which  it  is  more  difficult  to  vindicate  by  reasoning. 
That  doctrine  is  as  follows.  Where  a  complainant  files  ,a 
bill,  in  which  he  states  a  patent  right,  and  states  its  use  by 
the  defendant;  and,  in  a  charging  part,  recites  the  par- 
ticulars of  an  alleged  license  claimed  by  the  defendant  to 

1  Brown  v.  Shannon,  20  Howard,          2  Wilson  v.  Sandford,  10  Howard, 
56,  1857  ;  Albright  v.  Teas,  106  U.       101,  1850. 
S.  613,  1882. 


302  COURTS   PARTIES   AND   CAUSES.  [CHAP.   XVII. 

be  a  justification  of  that  use,  and  avers  that  there  is  no  such 
license  in  existence,  and  prays  for  an  injunction,  and  an  ac- 
count of  infringer's  profits ;  and  where  the  defendant  files 
an  answer,  admitting  the  patent  right,  and  admitting  the 
use,  and  defending  only  on  the  ground  of  the  alleged 
license ;  then  the  action  is  not  one  arising  under  the  patent 
laws  of  the  United  States.1  This  doctrine  was  held  by 
Justices  CLIFFORD,  MILLER,  FIELD,  and  HARLAN;  and  was 
dissented  from  by  Chief  Justice  WAITE  and  Justices  SWAYNE 
and  BRADLEY.  The  dissenting  opinion  of  the  latter,  is  one 
of  the  most  perfect  specimens  of  judicial  reasoning  to  be 
found  in  the  Supreme  Court  reports.  It  seems  to  the  text 
writer  to  be  perfectly  unanswerable,  and  he  cannot  forbear 
to  praise  it,  while  yielding  a  loyal  submission  to  the  con- 
clusion of  the  majority.  But  there  is  no  warrant  for  press- 
ing that  conclusion  any  further  than  it  necessarily  goes : 
no  warrant  for  applying  its  doctrine  to  any  case  which  lacks 
any  of  the  elements  upon  which  it  was  based. 

Where  a  complainant  files  a  bill  in  which  he  states  a 
patent  right,  and  states  its  use  by  the  defendant,  and  says 
nothing  about  any  contract  or  license,  and  prays  for  an  in- 
junction and  an  account  of  infringer's  profits';  and  where 
the  defendant  thereupon  files  an  answer  in  which  he  does 
not  traverse  any  part  of  the  bill,  but  pleads,  by  way  of  con- 
fession and  avoidance,  that  he  has  a  license  which  covers 
his  use  of  the  patent,  it  will  not  do  to  apply  the  rule  in 
Kartell  v.  Tilghman.  If  that  rule  were  applied  to  such  a 
case,  it  would  result  in  a  dismissal  of  the  bill  for  want  of 
jurisdiction.  Then  if  the  complainant  should  file  a  new  bill 
in  a  State  court,  precisely  like  the  other,  and  if  the  defend- 
ant should  thereupon  file  an  answer  saying  nothing  about 
any  license,  but  denying  the  validity  of  the  patent,  that 
suit  would  also  have  to  be  dismissed,  because  it  would  pre- 
sent no  controversy  except  one  touching  the  validity  of  a 
patent  for  an  invention.  Any  infringer  of  a  patent  could 
thus  defeat  every  suit  based  on  his  infringement,  by  simply 

1  Kartell  n.  Tilghman,  99  U.  S.  547, 1878. 


CHAP.  XVII.]  COURTS    PARTIES   AND   CAUSES.  303 

making  one  defence  in  one  court,  and  another  defence  in 
another  court,  no  matter  how  weak  both  of  those  defences 
might  be.  A  consequence  so  unjust  cannot  be  tolerated  ; 
and  to  prevent  such  a  consequence  it  is  necessary  to  hold, 
that  where  a  plaintiff  decides  to  sue  a  defendant  as  a  naked 
infringer,  the  Federal  courts  have  jurisdiction,  and  that 
such  jurisdiction  cannot  be  ousted  by  any  answer  which 
the  defendant  may  decide  to  interpose. 

The  operation  of  the  rule  in  Kartell  v.  Tilghman  was 
exemplified,  some  time  after  the  first  publication  of  the 
preceding  criticism  of  that  rule,  in  a  case  in  which  Judge 
WALLACE  felt  compelled  to  follow  the  decision  of  the  Su- 
preme Court,  though  it  necessarily  involved  a  refusal  to 
take  jurisdiction  of  such  a  case  as  the  Court  of  Appeals  of 
New  York  had  also  refused  to  adjudicate.1  But  a  few 
months  afterward  Judge  WALLACE  adjudicated  a  case  other- 
wise,2 which,  when  closely  analyzed,  will  be  found  to  be 
substantially  identical  with  the  case  which  was  before  the 
Supreme  Court  in  Kartell  v.  Tilghman.  In  that  later  case 
His  Honor  declined  to  follow  the  decision  in  Kartell  v. 
Tilghman  any  further,  saying  that  "the  defendant  could 
not  oust  the  court  of  jurisdiction  by  any  admission  he 
might  see  fit  to  make  in  his  pleadings."  This  last  decision 
of  Judge  WALLACE  can  hardly  be  defended  on  any  other 
ground  than  that  it  was  sternly  demanded  by  justice,  and 
was  agreeable  to  the  Constitution  and  laws  of  the  United 
States,  however  inconsistent  with  the  decision  in  Kartell  v. 
Tilghman  it  appears  to  be.  So  also  Judge  CARPENTER  has 
taken  jurisdiction  of  a  case  which  was  brought  for  infringe- 
ment, and  in  which  the  defendant  made  no  defence  except 
an  alleged  license.3  His  Honor  endeavored  to  distinguish 
the  case  before  him,  from  that  in  Kartell  v.  Tilghman,  by 
calling  attention  to  the  fact  that  the  alleged  license  in  that 
case  was  found  to  be  not  forfeited,  whereas  the  license  in 


1  McCarty  &  Hall  Trading  Co.  v.      32  Fed.  Rep.  625,  1887. 
Glaenzer,  30  Fed.  Rep.  387,  1887.  3  Hammacher  v.  Wilson,  26  Fed. 

*  Seibert  Oil  Cup  Co.  v.  Manning,      Rep.  239,  1886. 


304  COURTS    PARTIES   AND    CAUSES.  [CHAP.  XVII. 

the  case  before  him  was  found  by  him  to  be  forfeited.  But 
that  difference  evidently  has  no  relevancy  to  the  question  of 
jurisdiction ;  because  to  ascribe  such  relevancy  to  it,  would 
be  to  hold  that  a  Judge  may  have  jurisdiction  to  decide  a 
case  in  favor  of  the  complainant,  while  not  having  jurisdic- 
tion to  decide  the  same  case  in  favor  of  the  defendant. 

§  389.  Actions  for  infringement  of  patents,  being  transi- 
tory in  their  nature,  could  formerly  be  brought  in  any  dis- 
trict in  which  the  defendant  was  an  inhabitant  or  could  be 
found.1  But  a  statute  of  March  3, 18875  restricted  such  suits 
to  the  district  in  which  the  defendant  is  an  inhabitant ; a  and 
that  statute  has  been  construed  to  exempt  corporations 
from  such  suits  outside  of  the  district  or  districts  of  the 
States  in  which  they  are  respectively  incorporated.3 

§  390.  A  number  of  qualifications  exist  to  the  general  rule 
of  the  last  section ;  and  this  section  is  devoted  to  stating 
and  explaining  those  qualifications. 

Where  a  district  contains  more  than  one  division,  every 
such  action  brought  against  a  single  defendant  must  be 
brought  in  the  division  where  he  resides ;  and  where  there 
are  two  or  more  defendants  residing  in  different  divisions 
of  a  district,  such  an  action  must  be  brought  in  one  of 
those  divisions.4 

The  Circuit  Court  for  the  Southern  District  of  New  York 
has  no  jurisdiction  of  any  action  based  on  any  infringement 
committed  in  the  Northern  District  of  the  same  State.5  It 
has  been  held  in  one  case  that  where  such  a  suit  is  brought 
in  the  Southern  District,  the  court  will  proceed  to  judgment 
unless  the  defendant  sets  up  the  want  of  jurisdiction  in  his 
pleadings.6  But  this  was  apparently  an  error,  because  the 

1  18  Statutes  at  Large,  Part  3,  Ch,  359,  p.  236 ;  21  Statutes  at  Large, 
137,  Section  1,  p.  470.  Ch.  17,  Sec.  4,  p.  63 ;  Cb.  18,  Sec. 

2  24  Statutes  at  Large,  Ch.  373,  p.  4,  p.  64  ;   Ch.  120,  Sec.  2,  p.  155  ; 
552  ;  Reinstadler  v.  Reeves,  33  Fed.  Ch.  203.  Sec.  5,  p.  176. 

Rep.  308,  1887.  B  Revised  Statutes,  Section  657 ; 

3  Halstead  v.  Manning,   34  Fed.  Hodge  r>.  Railroad  Co.  6  Blatch.  85, 
Rep.  565,  1888.  1868. 

4  20  Statutes  at  Large,   Ch.   20,  « Black  v.  Thorn,  10  Blatch.  84, 
Sec.  3,  p.  263 ;   Ch.  169,  Sec.  3,  p.  1872. 

102 ;  Ch.  326,  Sec.  3,  p.  176 ;   Ch. 


CHAP.  XVII.]  COURTS   PARTIES   AND   CAUSES.  305 

Supreme  Court  has  decided  that  no  waiver  or  admission  of 
the  parties  can  give  a  court  jurisdiction  of  any  cause  of 
which  the  law  gives  it  no  jurisdiction.1  Courts  cannot  sit 
as  arbitrators.  Proceedings  outside  of  their  jurisdiction 
are  void,  and  no  waiver,  neglect,  or  admission  of  parties  can 
make  them  valid. 

§  391.  The  Court  of  Claims  is  the  tribunal  which  has 
jurisdiction  of  all  actions  brought  bj  owners  of  patent 
rights  against  the  government  of  the  United  States,  for 
compensation  for  implied  licenses  to  the  government,  to 
make  and  use  patented  inventions."  The  case  in  which  this 
point  of  law  is  established  was  decided  by  the  Court  of 
Claims  in  1879,  and  affirmed  by  the  Supreme  Court  Novem- 
ber 20th,  1882.  No  opinion  was  delivered  in  the  latter 
tribunal,  though  the  questions  involved  in  the  case  were 
both  new  and  important.  This  omissicn  to  review  the 
reasoning  of  the  court  below,  was  a  deserved  compliment 
to  Judge  NOTT,  who  delivered  the  opinion  in  the  lower 
tribunal.  That  opinion  is  one  of  the  most  able  patent  case 
opinions  ever  rendered  in  the  United  States ;  and  not  the 
least  of  its  merits  resides  in  the  fact  that  the  decision  is 
confined  to  the  precise  issues  at  bar.  The  case  being 
founded  on  an  implied  contract  of  license  between  the 
patentee  and  the  government,  no  attempt  is  made  in  the 
decision  to  show  whether  the  court  would  have  had  juris- 
diction, if  the  doings  of  the  government  had  been  tortious. 

§  392.  What  remedy  a  patentee  has  when  the  government 
makes  or  uses  specimens  of  his  patented  invention  without 
his  consent,  is  a  question  to  which  no  positive  answer  can 
at  present  be  given.  All  claims  founded  upon  any  law  of 
Congress  are  cognizable  in  the  Court  of  Claims.3  Claims 
for  infringements  of  patents  are  founded  on  the  patents  in- 
fringed, and  those  patents  are  founded  upon  a  law  of  Con- 
gress. Therefore  a  claim  for  an  infringement  is  ultimately 


1  Hipp  «.  Babin,  19  Howard,  278,      S.  369,  1888  ;  McKeever  «.  United 
1856.  States,  23  Off.  Gaz.  1525,  1879. 

*  United  States  v.  Palmer,  128  U.          *  Revised  Statutes,  Section  1059. 


306  COURTS  PARTIES   AND    CAUSES.  [CHAP.  XVII. 

founded  on  a  law  of  Congress.  It  might  thus  appear  that 
the  Court  of  Claims  has  jurisdiction  in  such  cases ;  but 
Justice  BRADLEY  has  remarked  that,  "As  its  jurisdiction 
does  not  extend  to  torts,  there  might  be  some  difficulty,  as 
the  law  now  stands,  in  prosecuting  in  that  court  a  claim  for 
the  unauthorized  use  of  a  patented  invention." '  But  perhaps 
a  distinction  may  be  drawn  between  torts  upon  ordinary 
property  and  torts  upon  patent  rights,  in  respect  of  this 
question  of  jurisdiction.  Torts  upon  ordinary  property  are 
outside  the  jurisdiction  of  the  Court  of  Claims,  because 
they  cannot  be  said  to  be  founded  upon  any  law  of  Con- 
gress, and  because  the  jurisdictional  statute  contains  no 
other  language  suitable  to  cover  them.  But  torts  upon 
patent  rights  are  ultimately  founded  upon  the  patent  laws, 
and  those  laws  are  laws  of  Congress. 

§  393.  But  whether  or  not  the  Court  of  Claims  has  juris- 
diction of  a  case  based  upon  an  unauthorized  making  or 
using  by  the  government,  of  a  patented  invention,  it  is  im- 
portant to  inquire  whether,  in  such  a  case,  an  action  will 
lie  against  those  agents  of  the  government  who  personally 
committed  the  infringement.  On  this  point  also  Justice 
BRADLEY  stated  his  opinion  in  an  obiter  dictum  in  the  case 
last  cited,  saying :  "  The  course  adopted  in  the  present 
case,  of  instituting  an  action  against  a  public  officer,  who 
acts  only  for  and  on  behalf  of  the  government,  is  open  to 
serious  objections.  We  doubt  very  much  whether  such  an 
action  can  be  sustained.  It  is  substantially  a  suit  against 
the  United  States  itself,  which  cannot  be  maintained  under 
the  guise  of  a  suit  against  its  officers  and  agents  except  in 
the  manner  provided  by  law.  We  have  heretofore  ex- 
pressed our  views  on  this  subject  in  Carr  v.  United  States, 
98  U.  S.  433."  But  the  opinion  in  Carr  v.  United  States 
was  also  delivered  by  Justice  BRADLEY,  and  this  part  of  it 
was  afterward  held  by  the  Supreme  Court  to  be  an  obiter 
dictum,  and  to  be  unsound."  The  reasoning  which,  in  the 


1  James  «.   Campbell,  104  U.  S.          *  United  States  v.  Lee,  106  U.  S. 
858,  1881.  216,  1882. 


CHAP.  XVII.]  COURTS  PARTIES  AND   CAUSES. 

Lee  case,  carried  the  majority  of  the  Supreme  Court  to  the 
conclusion  that  agents  of  the  government,  who  unlawfully 
seize  and  hold  the  lands  of  the  citizen,  may  be  sued  in  the 
Circuit  Courts,  must  ultimately  carry  that  tribunal  to  the 
same  conclusion,  relevant  to  governmental  agents  who  ap- 
propriate on  behalf  of  the  government,  the  patent  rights  of 
an  individual. 

§  394.  The  plaintiff  or  complainant  in  an  action  based  on 
ah  infringement  of  a  patent  may  be  the  patentee,  or  the 
sole  assignee  of  that  patent ;  or  any  grantee  under  a  patent 
may  sue  alone,  for  any  infringement  committed  within  his 
territory.1  It  is  not  necessary  for  the  plaintiff,  in  an  action 
at  law,  to  own  any  interest  in  the  patent  at  the  time  he 
brings  his  action.  It  is  enough  if  he  was  the  patentee,  as- 
signee, or  grantee  of  the  rights  infringed,  at  the  time  the 
infringement  sued  upon  was  committed.2  But  this  rule 
does  not  generally  apply  to  actions  in  equity,  for  such 
actions  are  generally  dependent  upon  an  injunction,  and  n6 
injunction  can  be  granted  to  restrain  future  infringements 
of  a  patent,  on  the  suit  of  a  person  who  has  no  interest  in 
the  patent  threatened  to  be  infringed.3 

§  395.  Actions  at  law  brought  by  assignees  or  grantees", 
for  infringements  committed  prior  to  the  time  they  obtained 
title,  must,  according  to  the  common  law,  be  brought  in  thes 
name  of  the  person  who  held  the  legal  title  to  the  patent 
right  when  and  where  it  was  infringed  by  the  defendant. 
This  rule  was  not  abrogated  by  the  Federal  statutes  which 
permitted  suits  to  be  brought  by  assignees,  unless  Justice 
CLIFFORD  was  in  error  in  saying,  in  substance,  that  the  as- 
signees which  were  contemplated  by  that  statute  are  as- 
signees of  patents  and  not  assignees  of  rights  of  action 
under  patents.4  But  Judge  SAGE  has  held  that  where  an 

'  Revised  Statutes,  Section  4919;  1868. 

Wilson  v.  Rousseau,  4  Howard,  646,  3  Waterman  v.  Mackenzie,  29  Fed.' 

1846 ;  Stein  v.  Goddard,  1  McAlis-  Rep.  316,  1886. 

ter,  82,  1856;  Siebert  Oil  Cup  Co.  v.  *  Moore  v.  Marsh,  7  Wallace,  515, 

Beggs,  32  Fed.  Rep.  790,  1887.  1868. 

2  Moore  v.  Marsh,  7  Wallace,  515, 


308  COURTS   PARTIES   AND   CAUSES.  [CHAP.  XVII. 

assignment  of  a  patent  assigns  also  rights  of  action  for  prior 
infringements  of  that  patent,  the  assignee  may  maintain  an 
action  at  law  in  his  own  name  for  those  infringements  as 
well  as  for  subsequent  infringements  of  that  patent.1  And 
actions  in  equity,  if  maintainable  at  all  in  such  a  case,  may 
be  brought  in  the  name  of  the  assignee  ;  and  such  an  action 
will  be  maintainable  where  the  suit  is  based  on  infringe- 
ments and  threatened  infringements,  committed  after  the 
complainant  obtained  title,  as  well  as  upon  infringements 
committed  before  that  event.2  An  action  in  equity  will  also 
be  maintainable  in  such  a  case,  if  the  assignor  of  the  right 
of  action  was  a  corporation  and  has  been  dissolved  or  has 
expired ; 3  or  if  for  any  reason  it  is  impossible  for  the  as- 
signee of  the  right  of  action  to  sue  in  the  name  of  the  as- 
signor.4 Where  the  assignor  is  dead  at  the  time  the  assignee 
desires  to  bring  an  action  at  law,  and  where  no  legal  repre- 
sentative of  the  assignor  exists,  or  is 'likely  to  exist  unless 
the  appointment  of  one  is  obtained  for  the  special  purpose 
of  using  his  name  as  nominal  plaintiff  in  the  assignee's  suit,  it 
would  seem  no  great  stretch  of  equity  jurisdiction  to  allow 
the  assignee  to  file  a  bill  in  his  own  name,  and  thus  avoid 
the  useless  and  expensive  circuity  of  compelling  him  first 
to  secure  the  appointment  of  an  administrator,  and  then  to 
bring  an  action  at  law  in  the  name  of  the  latter.  No  prin- 
ciple adverse  to  such  a  proceeding  was  perceived  by  Chief 
Justice  MARSHALL,  when,  in  a  similar  case  of  expensive  cir- 
cuity at  law,  the  more  direct  and  less  expensive  methods  of 
equity  were  invoked  before  him.5 

§  396.  Where  a  patentee,  assignee,  or  grantee,  who  was 
entitled  to  sue  for  an  infringement  of  a  patent,  died  before 

1  Adams  v.  Stamping  Co.  25  Fed.  Well  Packer  Co.  v.  Eaton,  12  Fed. 

Rep.  270,  1885.  Rep.  870,  1882. 

*  Dibble  v.  Augur.  7  Blatch.  86,  3  Lenox  v.  Roberts,  2  Wheaton, 

1869  ;  Henry  ®.  Stove  Co.  2  Bann.  373,  1817. 

&  Ard.  224,  1876  ;  Gordon  v.  An-  *  Hayward  v.  Andrews,  106  U.  S. 

thony,  16  Blatch.  234,  1879 ;  Mer-  675,  1882. 

rlam  ».   Smith,  11   Fed.  Rep.  589,  &  Riddle  v.  Mandeville,  5  Cranch, 

1882  ;   Shaw  v.  Lead  Co.  11   Fed.  329,  1809. 
Rep.   715,   1882;    Consolidated  Oil 


CHAP.  XVII.]  COURTS   PARTIES   AND   CAUSES.  309 

beginning  an  action  thereon,  such  an  action  may  be  brought 
by  his  executor  or  administrator,1  upon  his  fulfilling  the 
conditions,  and  giving  the  guarantees  of  fidelity  and  sol- 
vency required  by  the  law  of  the  State  wherein  the  court  is 
established  in  which  the  action  is  proposed  to  be  brought.* 
But  it  is  not  certain,  that,  when  beginning  a  patent  action 
in  a  Federal  court  in  a  State  other  than  that  of  his  appoint- 
ment, an  executor  or  administrator  must  conform  to  the 
conditions,  or  give  the  guarantees,  prescribed  by  the  local 
laws.3  Whether  the  various  State  laws,  relevant  to  foreign 
executors  or  administrators  suing  in  State  courts,  are  bind- 
ing in  such  cases  as  these,  is  a  point  upon  which  there  ap- 
pears to  be  a  conflict  of  authority.  The  cases  last  cited 
appear  to  support  the  negative  of  the  question,  while  those 
cited  just  before  seem  to  sustain  the  affirmative  view.  It  is 
possible  that  a  distinction  may  be  drawn  on  this  point  be- 
tween actions  based  on  patents,  and  actions  arising  out  of 
local  law  and  brought  into  Federal  courts  on  grounds  of 
diverse  citizenship.  If  that  distinction  is  found  to  be  im- 
portant, it  may  lead  to  a  decision  that  executors  and  admin- 
istrators may  begin  and  prosecute  patent  cases  in  Federal 
courts  in  States  other  than  that  of  their  appointment,  with- 
out any  regard  to  the  probate  or  other  analogous  laws  of 
those  States.  If  it  is  held  otherwise,  then  the  laws  of  the 
States  relevant  to  the  conditions  upon  which  foreign  ex- 
ecutors or  administrators  are  permitted  to  sue  in  their 
courts  will  require  the  attention  of  the  practitioner  in  such 
cases.  In  some  States  those  conditions  amount  to  local 
probate,  and  in  others  they  amount  to  no  more  than  the 
giving  of  a  bond  for  costs.  But  whether  onerous  or  easy, 
and  whether  necessary  or  unnecessary  to  be  regarded  in 


1  May  v.  County  of  Logan.  30  Fed.  3  Hodge  «.  Railroad  Cos.  4  Fisher, 

Rep.  253,  1887.    "  162.  1870 ;  Northwestern  Fire  Ex- 

9  Rubber  Co.  «.  Goodyear,  9  Wai-  tinguisher  Co.  v.  Philadelphia  Fire 

lace,  791.  1869 ;  Wilkins  e.  Ellett,  Extinguisher  Co.  1  Bann.  &  Ard. 

108  U.    8.   256,  1882 ;    Picquet  «.  177,  1874. 
Swan,  3  Mason,  472,  1824. 


310  COURTS    PARTIES   AND    CAUSES.  [CHAP.  XVII. 

patent  cases,  an  omission  to  regard  them  cannot  be  availed 
of  by  a  defendant,  unless  availed  of  in  his  pleadings.1 

§  397.  Where  an  executor  or  administrator  of  a  deceased 
patentee,  or  assignee  or  grantee  of  a  patent  right,  assigns 
that  right  to  another,  or  assigns  to  another  a  right  of  action 
for  its  infringement ;  that  other  can  sue  theieon  in  any 
State  without  any  proceedings  in  the  nature  of  local  pro- 
bate, provided  he  can  sue  in  his  own  name.2  Whether  he 
can  sue  in  his  own  name  will  depend  upon  whether  he  is 
entitled  to  an  injunction,  or  if  not  entitled  to  an  injunction, 
it  will  depend  upon  whether  equity  can  take  jurisdiction  on 
some  other  ground  ;  or  if  not  entitled  to  sue  in  equity  at  all, 
it  will  depend  upon  whether  the  laws  of  the  particular  State 
authorize  assignees  of  rights  of  action  to  bring  actions  at 
law  in  their  own  respective  names.3 

§  398.  Patentees  and  other  persons  entitled  to  bring  ac- 
tions for  infringements  of  patents,  may  appoint  attorneys 
in  fact  to  bring  those  actions  in  the  names  of  the  appointors  ; 
but  not  in  the  names  of  the  attorneys  in  fact.4 

§  399.  Owners  in  common  of  patent  rights  must  sue 
jointly  for  their  infringement,  or  the  defendant  may  plead 
in  abatement.  This  rule  applies  where  a  patentee  has  as- 
signed an  undivided  part  of  his  patent,6  and  also  to  caseswhere 
the  owner  of  the  patent  has  granted  an  undivided  interest 
therein,  in  that  part  of  the  territory  of  the  United  States 
wherein  the  infringement  sued  upon  was  committed.  In 
the  first  of  these  cases  the  action  must  be  brought  by  the 
patentee  and  assignee  jointly  ;  and  in^the  other  case  it  must 
be  jointly  brought  by  the  owner  of  the  patent  and  his 
grantee.  Indeed  the  rule  necessarily  applies  to  every  case 

1  Rubber  Co.  c.  Goodyear,  9  Wai-  Fed.  Rep.  253,  1887. 

lace,  791,  1869.  3  May  v.  County  of  Logan,  30  Fed. 

8  Harper  v.  Butler,  2  Peters,  238,  Rep.  253, 1887. 

1829;  Trecothick  0.  Austin,  4  Mason,  4  Goldsmith    v.     Collar     Co.    18 

36,  1825;  Leake  v.  Gilchrist,  2  Dev-  Blatch.  82,  1880. 

ereaux  (N.  C.),  73,  1829;  Peterson  v.  6  Moore  v.  Marsh,  7  Wallace,  515, 

Chemical  Bank,  32  N.  Y.  21,  1865;  1868;    Dick    v.    Struthers,   25  Fed. 

Riddick  <o.   Moore,   65  N.  C.   382,  Rep.  104,  1885. 
1871;  May  v.    County  of  Logan,  30 


CHAP.   XVII.]          COURTS   PARTIES   AND   CAUSES.  311 

where  a  plurality  of  persons  own  the  undivided  interest  ia 
a  patent  right,  whether  in  the  whole,  or  only  in  a  part  of 
the  territory  of  the  United  States.  And  it  has  been  held  in 
one  case,  that  the  owner  of  a  patent  right  in  a  part  of  the 
territory  of  the  United  States,  may  join  with  the  owner  of 
the  same  patent  right  in  another  part  of  that  territory,  in 
suing  for  infringement  of  the  patent  in  the  territory  of  the 
latter,  on  the  ground  that  all  the  owners  of  territorial  rights 
under  the  patent  are  interested  in  having  it  sustained.'  But 
there  is  no  occasion  for  a  person  who  has  only  an  interest 
in  the  proceeds  of  a  patent,  without  having  any  title  in  the 
patent  itself,  to  join  in  a  suit  for  its  infringement.2 

§  400.  Licensees  under  patents  cannot  bring  actions  for 
their  infringement.3  Where  a  person  has  received  an  ex- 
clusive license  to  use  or  to  sell  a  patented  invention  within 
a  specified  territory,  all  actions  at  law  against  persons  who, 
without  right,  have  done  anything  covered  by  the  license, 
must  be  brought  in  the  name  of  the  owner  of  the  patent 
right,  but  generally  for  the  use  of  the  licensee ; 4  and  all 
actions  in  equity  must  be  brought  by  the  owner  of  the 
patent  right  and  the  exclusive  licensees  suing  together  as 
joint  complainants,"  but  the  holder  of  a  license  less  than 
exclusive  need  not  join  in  an  action  in  equity  for  an  infringe- 
ment of  the  patent  under  which  he  is  licensed.'  Actions  at 
law  brought  in  the  name  of  the  owner  of  a  patent  right,  but 
actually  begun  by  an  exclusive  licensee,  may  be  maintained 


1  Otis  Mfg.  Co.  v.  Crane  Mfg.  Co.  Rep.  255,  1882;  Ingalls  v.  Tice,  14 
27  Fed.  Rep.  558, 1886.  Fed.   Rep.    297,    1882;    Wilson    v^ 

2  Bogart  v.  Hinds,  25  Fed.  Rep.  Chickeriug,  14  Fed.  Rep.  917,  1883. 
Rep.  485,  1885.  4  Littlefield  v.  Perry,  21  Wallace, 

3  Gayler  v.   Wilder,  10  Howard,  223,  1874;  Goodyear  v.  McBurney,  3 
477.   1850;    Paper-Bag    Cases,    105  Blatch.  32,  1853. 

U.  S.  766,  1881;  Blanchard  v.  Eld-  6  Hammond  v.  Hunt,  4  Bann.  & 
ridge,  1  Wallace,  Jr.  337,  1849;  Ard.  113,  1879;  Waterman  v.  Mac- 
Potter  v.  Holland,  4  Blatch.  206,  Kenzie,  29  Fed.  Rep.  317,  1888; 
1858;  Sanford  «.  Messer,  1  Holmes,  Huber  v.  Sanitary  Depot,  34  Fed. 
149,  1872;  Nelson  v.  McMann,  4  Rep.  752,  1888. 
Bann.  &  Ard.  203,  1879;  Gamewell  *  Frankfort  Process  Co.  v.  Pepper. 
Telegraph  Co.  v.  Brooklyn,  14  Fed.  26  Fed.  Rep.  336,  1885. 


312  COURTS    PARTIES   AND   CAUSES.  [CHAP.  XVII. 

by  the  latter,  even  against  the  will  of  the  nominal  plaintiff.' 
And  where  an  exclusive  licensee  brings  an  action  in  equity 
in  the  name  of  himself  and  the  owner  of  the  patent  right, 
that  action  may  be  maintained  without  the  co-operation 
and  even  against  the  objection  of  the  latter. 

Where  the  owner  of  a  patent  is  himself  an  infringer  of  a 
licensee's  exclusive  right  to  use  or  to  sell  the  invention 
covered  thereby,  no  action  at  law  can  remedy  the  wrong. 
The  licensee  cannot  bring  such  an  action  in  his  own  name 
in  that  case,  any  more  than  in  another ;  and  he  cannot  sue 
in  the  name  of  the  wrong-doer,  for  he  would  thus  make  the 
latter  both  plaintiff  and  defendant.  Such  a  state  of  facts 
constitutes  such  an  impediment  to  an  action  at  law  as 
authorizes  the  licensee  to  sue  the  owner  of  the  patent  in  a 
court  of  equity.2  Where  an  exclusive  licensee,  who  pays 
royalties  in  proportion  to  the  extent  of  his  use  or  his  sales 
of  the  patented  invention,  allows  infringers  to  use  or  to  sell 
that  invention  without  interference  from  him,  the  owner  of 
the  patent  right  may  sue  those  infringers  in  his  own  name 
and  for  his  own  use.3 

§  401.  The  defendant  in  an  action  for  an  infringement  of 
a  patent  may  be  a  natural  person.  A  private  corporation 
may  also  be  held  liable  as  defendant  in  such  an  action.4 
Among  public  corporations,  the  liability  of  a  city  for  in- 
fringing a  patent  has  been  affirmed,5  and  that  of  a  county 
has  sometimes  been  affirmed  and  sometimes  denied.8  If 
such  a  distinction  exists  between  a  city  and  a  county,  it  is 
founded  on  the  fact  that  cities  are  created  and  exist  mainly 
for  the  special  use  of  the  people  who  compose  them  ;  while 

1  Goodyear  v.  Bishop,  4   Blatch.  1871. 

438,  1860.  « Jacobs  v.   Hamilton  County,  4 

*  Littlefield  n.  Perry,  21  Wallace,  Fisher,  81,  1862;  May  t.  County  of 

223,  1874;    Root  v.  Railway  Co.  105  Mercer,   30  Fed.    Rep.    246.   1887; 

U.  8.  216,  1881.  May  v.  County  of  Juneau,  30  Fed. 

3  Still  v.   Reading,  20  Off.   Gaz.  Rep.  241,  1887;  May  v.  County  of 
1026,  1881.  Logan,  30  Fed.  Rep.  260,  1887;  May 

4  York  &  Maryland  Line  Railroad  v.   County  of  Rails,  31  Fed.    Rep. 
Co.  v.  Winans,  17  Howard,  30.  1854.  473,  1887. 

8  Bliss  v.  Brooklyn,  4  Fisher,  596, 


CHAP.  XVII.]         COURTS   PARTIES  AND   CAUSES.  313 

counties  are  subdivisions  of  States,  made  for  the  purposes 
of  political  organization,  and  civil  and  judicial  administra- 
tion.1 The  same  reasons,  if  valid,  would  indicate  that 
organized  villages  are  generally  liable  for  infringements, 
while  ordinary  townships  are  not.  The  general  rule  on  the 
subject  would  then  appear  to  be  that  cities  and  villages  are 
liable  for  infringements  of  patents,  unless  the  charters  or 
statutes  which  created  or  which  regulate  them  otherwise 
require  or  provide,  while  counties  and  townships  are  not  so 
liable  unless  they  are  made  so  by  the  legislative  power 
which  called  them  into  being.*  School  districts  probably 
fall  in  the  same  category  as  townships  in  respect  of  this 
sort  of  liability.3  Of  course,  no  State  can  be  sued  for  any 
infringement  of  a  patent ; 4  and  the  nation  cannot  be  sued 
except  by  its  own  consent.5  Whether  that  consent  has  been 
given  in  the  statute  establishing  the  Court  of  Claims,  and 
whether  agents  of  the  national  government  are  liable  to  ac- 
tions for  infringements  committed  by  them  in  its  behalf, 
are  questions  which  are  treated  in  Sections  392  and  393  of 
this  book. 

§  402.  Natural  persons  cannot  escape  liability  for  their 
infringements  of  patents  on  the  ground  that  they  are  minors, 
married  women,  or  lunatics.8  A  minor  is  not  less  liable  to 
an  action  because  the  act  of  infringement  was  done  at  the 
command  of  his  father ; T  but  if  a  married  woman  commits 
an  infringement  in  the  presence  of  her  husband,  she  is  not 
liable  to  an  action  therefor,  unless  it  can  be  shown  that  she 
did  it  without  his  influence  or  consent.8  In  the  absence  of 
such  evidence,  the  husband  is  alone  liable  for  the  torts  of 

1  Ward  D.  County  of  Hartford,  12  Constitution  of  the  United  States. 

Connecticut.   406,    1838;     Commis-  5  United  States  «.  Lee,  106  U.  S. 

sioners  of  Hamilton  County  v.  Mig-  204, 1882. 

hels.  7  Ohio  State,  118,  1857.  6  Cooley  on  Torts,  Chapter  IV. 

*  May  «.  County  of  Buchanan,  29  7  Humphreys  v.  Douglass,  10  Ver- 

Fed.  Rep.  473,  1886;  May  v.  County  mont,  71,  1838;  Scott  v.  Watson,  46 

of  Cass,  30  Fed.  Rep.  762,  1887.  Maine.  362,  1859. 

3  Wilson    v.    School    District,   32  *  Bishop's  Law  of  Married  Wo- 
New  Hampshire,  118,  1855.  men,  Volume  2,  Section  258. 

4  Eleventh     Amendment    to    the 


COURTS    PARTIES   AND    CAUSES.  [CHAP.  XVII. 

the  wife  which  are  committed  in  his  presence ; '  and  for  the 
infringements  which  are  committed  jointly  by  both.2  The 
only  distinction  between  the  liability  of  lunatics  and  of  sane 
persons,  for  such  torts  as  infringements  of  patents,  seems 
to  be  that  the  former  can  never  be  held  liable  for  more  than 
actual  damages,  in  an  action  at  law,3  or  his  actual  profits,  in 
an  action  in  equity.4 

§  403.  An  agent  or  salesman  who  sells  specimens  of  a 
patented  thing  on  commission  is  liable  as  an  infringer  for  so 
doing/  But  a  mechanic  who,  when  working  for  wages, 
makes  or  uses  a  patented  thing,  or  uses  a  patented  process, 
at  the  command  of  his  employer,  is  not  liable  to  an  action 
at  law  on  that  account,6  though  he  may  doubtless  be  re- 
strained by  an  injunction  from  continuing  such  making  or 
using.7  A  decree  for  an  account  of  profits  would  not  be 
proper  in  such  a  case,  because  a  mechanic  cannot  be  said 
to  make  any  profits  from  such  an  infringement.  Nor  would 
a  decree  for  damages  be  any  more  proper  in  an  action  in 
equity,  than  would  a  judgment  for  damages  in  an  action 
at  law. 

§  404.  Whoever  directs  or  requests  another  to  infringe  a 
patent  is  himself  liable  to  an  action  for  the  resulting  in- 
fringement, on  the  plain  principle  that  what  one  does  by  an- 
other he  does  by  himself.8  So,  also,  if  an  infringement  is 
committed  by  A.  B.,  for  the  benefit  of  C.  D.,  but  without 
the  knowledge  or  authority  of  the  latter,  the  latter  will  still 
be  liable  as  an  infringer,  if  he  approves  the  tort  after  its 
commission."  An  infringement  which  is  committed  by  an 

1  Bishop's  Law  of  Married  Wo-  1834;  United  Nickel  Co.  v.  Worth- 
men,  Volume  1,  Section  43.  ington,   13   Fed.   Rep.    392,   1882; 

2  Green  v.  Austin,   22  Off.  Gaz.  Young  v.  Foerster,  37  Fed.  Rep.  203, 
683,  1882.  1889. 

3  Cooley  on  Torts,  page  102.  '  Goodyear  «.   Mullee,  5  Blatch. 

4  Avery  v.  Wilson,  20  Fed.  Rep.  437,  1867. 

857,  1884.  8  Green  v.  Gardner,  22  Off.  Gaz. 

6  Potter  v.  Crowell,  3  Fisher,  112,  683,  1882. 

1866;  Maltby  v.  Bobo,  14  Blatch.  53,  9  See  Judson  ®.  Cook,  11  Barbour 

1876;  Steiger  v.  Heidelberger,  4  Fed.  (K  Y.),  642, 1852;  Allred  ».  Bray,  41 

Rep.  455,  1880.  Missouri,  484,  1867. 

6  Delano    v.    Scott,    Gilpin,   498, 


CHAP.  XVII.]         COURTS   PARTIES  AND   CAUSES.  315 

employee  in  the  regular  course  of  his  employer's  business 
will  also  render  the  latter  liable  to  an  action,  even  if  the 
employer  forbade  the  acts  which  constituted  the  infringe- 
ment,1 or  even  if  the  employer  did  not  know  that  such  was 
the  character  of  those  acts.' 

§  405.  It  is  a  general  principle  of  law,  that  whoever  does 
an  act  which  naturally  causes  another  to  commit  a  tort  is 
himself  liable  to  an  action  therefor.3  The  applicability  of 
this  doctrine  to  patent  suits  is  a  subject  which  is  as  yet  al- 
most wholly  unexamined  by  the  courts.  When  so  examined, 
it  will  probably  be  found  to  have  its  limitations.  If  A.  B. 
unlawfully  makes  a  specimen  of  a  patented  thing,  and  sells 
it  V>  C.  D.,  a  man  whose  business  it  is  to  use  things  of  that 
class,  there  seems  to  be  no  injustice  in  holding  the  former 
responsible,  not  only  for  his  own  illegal  making  and  selling, 
but  also  for  the  illegal  using  committed  by  the  latter,  for 
that  making  and  selling  naturally  resulted  in  that  using. 
On  the  other  hand,  if  E.  F.,  a  merchant,  gives  G.  H.,  a 
manufacturer,  an  order  for  a  quantity  of  articles  which  may 
be  made  either  with  or  without  a  particular  patented  ma- 
chine, and  if  G.  H.  makes  those  articles  with  that  machine 
because  he  ordinarily  and  naturally  uses  that  machine  for 
such  purposes,  it  seems  to  be  clear  that  E.  F.  is  not  liable 
for  that  unlawful  making.4  But  if  I.  J.  unlawfully  makes  a 
patented  machine  and  leases  it  to  K.  L.  to  be  used,  it  seems 
right  to  hold  the  former  liable  to  an  action  for  that  use. 

§  406.  Where  several  persons  co-operate  in  any  infringe- 
ment, all  those  persons  are  of  course  liable  therefor.  In 
that,  as  in  all  cases  of  torts  for  which  several  persons  are 
liable,  all  may  be  sued  jointly,  or  any  of  them  may  be  sued 
alone.5  So,  also,  an  action  may  be  brought  against  several 

1  See    Philadelphia    &    Reading  34  California,  629,  1868;  Smith  t. 

Railroad  Co.  v.  Derby,  14  Howard,  Felt,  50  Barbour  (N.  T.),  612,  1868. 

468,1852.  4Keplinger    v.    De    Young,     10 

4  Wooster  v.   Marks,   17    Blatch.  Wheaton,  358,  1825;  Brown  v.  Dis- 

368,  1879.  trict  of  Columbia,  3  Mackey,  502, 

8  Guille  ».  Swan,  19  Johnson  (N.  1884. 

Y.),  381,  1822;  Brooks  n.  Ashburn,  9  5  Jennings  0.  Dolan,  29  Fed.  Rep. 

Georgia,  297,  1851;  Lewis  r.  Johns,  862,  1887. 


316  COURTS  PAETIES  AND  CAUSES.          [CHAP.  XVII. 

joint  defendants,  and  sustained  against  such  of  them  as  the 
evidence  shows  to  be  liable,  even  though  not  sustained 
against  all.1  Where  an  action  at  law  is  sustained  against 
several  joint  infringers,  the  judgment  will  be  entered  against 
all,  regardless  of  whether  the  benefits  of  the  infringement 
were  confined  to  part  of  them,  or  extended  to  the  whole ; a 
though  only  one  payment  can  be  enforced ; 3  and  a  decree 
for  profits,  in  an  action  in  equity,  will  be  entered  only  against 
those  of  the  defendants  who  are  proved  to  have  actually 
realized  profits  from  the  infringement.4 

§  407.  The  facts  which  will  constitute  co-operative  joint 
infringement  fall,  when  analyzed,  into  a  large  number  of 
classes.  A  few  of  them  may  be  mentioned  in  this  section, 
but  a  much  larger  number  must  be  left  to  the  reflections  of 
the  reader,  or  to  the  development  of  litigation. 

Where  one  man  owns  and  others  operate  an  infringing 
machine,  all  are  jointly  liable  to  an  action  therefor.5  Where 
one  person  makes  and  sells  a  part  of  a  patented  combina- 
tion, and  another  person  independently  makes  and  sells  the 
residue  of  that  combination,  both  intending  that  the  pur- 
chaser shall  assemble  the  parts,  and  use  the  combination, 
there  the  maker  and  seller  of  either  of  the  parts  is  liable  to 
an  action  as  infringer."  So,  also,  where  a  person  makes  and 
sells  a  composition  of  matter,  or  makes  or  sells  any  material, 
which  is  described  in  a  patent,  and  which  is  useful  only  for 
the  purpose  of  performing  a  process  covered  by  that  patent, 
or  which  is  thus  sold  with  knowledge  that  it  is  to  be  used 
in  performing  that  process,  there  also  the  seller  is  liable  to 
an  action  at  law  or  in  equity.7  But  where  the  material 

1  Reutgen  v.  Kanowrs,  1   Wash-  1871;  Schneiders.  Pountney,  21  Fed. 
ington,  172,  1804.  Rep.  403,  1884;  Travers  v.  Beyer,  26 

2  Cooley  on  Torts,  p.  186.  Fed.  Rep.  450,  1886. 

3  Jennings  ®.  Dolan,  29  Fed.  Rep.  '  Rumford    Chemical    Works    t>. 
862,  1887.  Hecker,  2  Bann.  &  Ard.  363,  1876; 

4  Elizabeth  v.  Pavement  Co.  97  U.  Willis  v.  McCullen,  29   Fed.  Rep. 
S.  140,  1877.  641,  1886;  Alabastine  Co.  v.  Payne, 

5  Woodworth ^.Edwards,  3 Wood-  27  Fed.  Rep.  560,  1886;   Celluloid 
bury  &  Minot,  121,  1847.  Mfg.    Co.  v.  Zylonite  Co.    30  Fed. 

6  Wallace  ».  Holmes,  9  Blatch.  73,  Rep.  437,  1887. 


CHAP.  XVII.]  COUETS   PABTIES  AND   CAUSES.  317 

thus  sold  is  useful  for  some  other  purpose  than  to  perform 
the  patented  process,  and  where  the  seller  did  not  know 
when  selling  it  that  it  was  purchased  to  be  thus  used,  he 
incurs  no  liability  to  an  action  for  infringement.1  But  if 
there  was  an  intention  that  the  thing  made  and  sold  should 
be  incorporated  into  the  patented  combination,  an  action 
for  infringement  cannot  be  defeated  by  showing  that  it  could 
have  been  used  for  some  purpose  alone,  or  in  unpatented 
combinations.2 

Persons  who  contribute  money  for  the  express  purpose 
of  supporting  others  in  infringing  a  patent,  are  also  liable 
as  infringers ; 3  and  where  an  infringer  makes  a  voluntary 
assignment  for  the  benefit  of  creditors  and  the  assignee  con- 
tinues the  infringement,  both  may  be  sued  jointly  for  the 
infringement  committed  before,  and  also  that  committed 
after  the  assignment.4 

Where  one  of  several  joint  infringers  is  sued  for  their  in- 
fringement, the  other  one  or  ones  may  be  admitted  as  joint 
defendant  to  help  defend  the  suit.5 

§  408.  A  partnership  is  liable  to  an  action  for  an  infringe- 
ment committed  in  the  regular  course  of  the  partnership 
business,  by  one  or  more  of  the  partners,  or  under  his  or 
their  orders  ;  and  also  for  any  infringement  committed  out- 
side of  that  regular  course  of  business,  if  it  was  previously 
authorized  or  afterward  adopted  as  the  act  of  the  partner- 
ship by  all  the  partners.  But  no  partnership  is  liable  for 
any  infringement  committed  outside  of  the  regular  course 
of  the  partnership  business,  unless  it  was  so  authorized  or 
adopted.8 

§  409.  Private  corporations  are  responsible  for  infringe- 


1  Maynard  v.  Pawling,  5  Bann.  &  3  Bate  Refrigerating  Co.  t.  Gillett, 

Ard.  551,  1880;  Millner  «.  Schofield,  30  Fed.  Rep.  684,  1887. 

4  Hughes,  261, 1881;  Snyder  v.  Bun-  4  Gordon  v.  Harvester  Works,  23 

nell.  29  Fed.  Rep.  47,  1886  ;   Geis  «.  Fed.  Rep.  147,  1885. 

Kimber,  36  Fed.  Rep.  109,  1888.  5  Curran  «.  Car  Co.  32  Fed.  Rep. 

*  Saxe  v.   Hammond,  1  Holmes,  835,  1887. 

456,  1875;  Bowker  «.  Dows,  3  Bann.  •  See  Story  on  Partnership,  Sec- 

&  Ard.  518,  1878.  tions  166  and  168. 


COURTS   PARTIES   AND    CAUSES.  [CHAP.  XVII. 

ments  committed,  authorized,  or  ratified  by  them,  under 
substantially  the  same  rules  as  those  which  govern  the  sim- 
ilar responsibility  of  natural  persons.  It  was  formerly 
supposed  that  corporations  could  not  be  held  liable  for 
torts,  because  torts  are  never  authorized  by  corporate 
charters,  and  are  therefore  ultra  vires.  But  this  idea  was 
soon  found  to  produce  gross  injustice  in  its  practical  oper- 
ation ;  and  was  therefore  abandoned  by  the  courts.1  The 
law  is,  that  every  private  corporation  is  liable  for  all  the 
torts  which  were  authorized  by  that  corporation,  and  for 
all  torts  done  in  pursuance  of  any  authority  to  act  on  its 
behalf,  on  the  subject  to  which  the  torts  relate,  and  for  all 
torts  ratified  by  the  corporation  after  they  are  committed.2 
And  in  deciding  upon  this  liability,  the  courts  consider  cor- 
porate officers,  agents,  and  servants  as  possessing  a  large 
discretion,  and  they  accordingly  hold  the  corporation  liable 
for  all  their  acts  within  the  most  extensive  range  of  the 
corporate  powers.3  The  agent  of  a  coporation  in  commit- 
ting an  infringement  may  be  another  corporation  ;  and  the 
relation  of  agency  exists  and  binds  the  principal,  where 
the  agent  infringes  a  patent  in  authorized  pursuance  of  the 
business  which  the  principal  was  chartered  to  transact.4 
Unless  their  charters  otherwise  provide,  public  corpora- 
tions which  are  liable  at  all  for  infringements  of  patents, 
are  doubtless  liable  under  the  same  circumstances  and  to 
the  same  extent  as  private  corporations  are.5 

§  410.  Under  what  circumstances  and  to  what  extent  an 
officer,  director,  or  stockholder  of  a  corporation  is  person- 
ally liable  for  infringements  committed  by  it,  are  questions 
heretofore  but  seldom  and  but  slightly  examined  by  the 
courts.  It  has  been  adjudicated  that  where  persons 
actively  and  personally  conduct  infringements  of  patents, 


1  Baltimore    and    Potomac  Rail-  3  See  Cooley  on  Torts,  p.  119. 
road  Co.  v.  Fifth  Baptist  Church,  4  York  and  Maryland  Line  Rail- 
108  U.  S.  330,  1882;  Salt  Lake  City  road  Co.  «.  Winans,  17  Howard,  38, 
«.  Hollister,  118  U.  S.  256,  1886.  1854. 

2  May  v.  County  of  Mercer,  30  B  May  v.  County  of  Mercer,  30 
Fed.  Rep.  248,  1887.  Fed  Rep.  248,  1887. 


CHAP.  XVII.]          COURTS  PARTIES  AND  CAUSES.  319 

they  cannot  avert  an  injunction  by  proving  that  they  acted 
under  the  charter  of  a  corporation,  and  as  officers,  directors, 
or  stockholders  thereof.'  These  decisions  were  made  by 
Justice  NELSON,  and  Judges  W.  D.  SHIPMAN,  WOODS  and 
THAYER  ;  but  Judge  LOWELL  held  that  an  action  at  law  can- 
not be  maintained  against  the  officers,  directors,  or  share- 
holders of  a  corporation  which  infringes  a  patent,  even 
where  such  persons  personally  conducted  the  business 
which  constituted  the  infringement.8  If  that  is  the  law 
upon  the  point,  it  must  also  be  the  law  that  no  damages 
can  be  recovered  by  an  action  in  equity  against  any  such 
person.  But  it  will  not  follow,  where  profits  have  been 
realized  by  persons  from  infringements  committed  by  them 
in  the  disguise  of  a  corporation,  that  they  can  lawfully  re- 
tain those  profits,  and  leave  the  patentee  remediless.  And 
it  is  possible  that  Judge  LOWELL  was  wrong  in  his  opinion. 
His  examination  of  the  point  does  not  appear  to  have  been 
characterized  by  all  that  thoroughness  with  which  his  judi- 
cial opinions  were  generally  developed  ;  and  he  himself  re- 
marked that  his  conclusion  was  contrary  to  what  counsel 
had  conceded  in  several  earlier  cases.  The  point  is  one  of 
much  importance.  Upon  it  may  often  depend  the  just  re- 
ward of  invention,  and  the  just  punishment  of  tort.  An 
examination  of  the  subject  in  the  light  of  analysis  and  of 
analogies  may  therefore  be  acceptable  to  the  profession, 
and  not  useless  to  the  courts. 

§  411.  Wrongs  are  divisible,  in  one  aspect,  into  two 
classes :  wrongs  of  commission  and  wrongs  of  omission. 
Where  an  officer,  director,  or  stockholder  of  a  corporation 
is  engaged  in  managing  its  business,  and  as  a  part  of  that 
business  manages  and  directs  the  infringement  of  a  patent, 
that  person  is  chargeable  with  a  wrong  of  commission. 


1  Goodyear  v.  Phelps,  3  Blatch.  Co.   v.   Barbed  Wire  Co.   30  Fed. 

91, 1853;  Poppenhusen  v.  Faulk,  4  Rep.  123,  1887. 

Blatch.    495,  1861;  National  Brake  8  United  Nickel  Co.  n  Worthing- 

Shoe  Co.  «.  Mfg.  Co.  19  Fed.  Rep.  ton,  13  Fed.  Rep.  393,  1882. 
515,  1884;  Iowa  Barbed  Steel  Wire 


320  COURTS    PARTIES   AND   CAUSES.  [CHAP.  XVII. 

Where  such  a  person  has  power  to  prevent  his  corporation 
from  infringing  a  patent,  and  omits  to  exercise  that  power, 
and  where  the  corporation  therefore  infringes  that  patent, 
then  that  person  is  chargeable  with  a  wrong  of  omission. 
Where  a  person  is  an  officer,  director,  or  stockholder  of  a 
corporation,  but  has  no  personal  power  to  cause  it  to  in- 
fringe a  particular  patent,  nor  to  restrain  it  from  so  doing, 
that  person  is  chargeable  with  no  wrong  of  either  sort. 

§  412.  Stockholders  seldom  have  any  power,  merely  as 
stockholders,  to  control  the  action  of  their  corporation  in 
such  a  matter  of  detail  as  the  infringement  of  a  particular 
patent.  Unless  it  can  be  shown  that  the  stockholder  whom 
it  is  sought  to  hold  liable  in  a  particular  case  did  possess 
power  of  that  kind,  it  is  clear  that  the  common  law  will  not 
compel  him  to  respond  in  damages  for  any  infringement 
with  which  he  was  not  personally  connected.  If  the  law 
were  otherwise  a  man  could  lawfully  be  made  to  suffer  for 
wrongs  which  he  did  not  commit,  and  could  not  prevent, 
and  from  which  he  received  no  advantage.  Indeed  it  is  the 
general  rule  of  the  common  law,  that  mere  stockholders  in 
a  corporation  are  not  liable  for  its  debts,1  and  if  not  liable 
for  its  debts,  they  surely  ought  not  to  be  liable  for  its 
torts. 

§  413.  The  officers  of  a  corporation  are  the  persons  who 
are  charged  with  the  superintendence  and  control  of  its 
transactions.  It  is  doubtless  their  duty  to  refrain  from 
directing  infringements  to  be  committed;  and  also  to  pre- 
vent the  agents  and  servants  of  their  corporations  from 
committing  infringements  of  patents,  when  prosecuting  the 
corporate  business.  If  such  an  officer  directs  and  causes  a 
specific  thing  to  be  done  which  turns  out  to  constitute  an 
infringement,  it  is  extremely  difficult  to  see  why  he  should 
be  permitted  to  shift  all  the  responsibility  for  the  tort  upon 
the  intangible  corporation,  that  is  to  say  upon  the  innocent 
stockholders  as  a  body. 

If  an  agent  or  a  servant  of  a  corporation  commits  an  in- 

1  Shaw  0.  Boylan,  16  Indiana,  886,  1861. 


CHAP.  XVII.]  COURTS   PARTIES  AND   CAUSES.  321 

fringement  in  the  course  of  the  corporate  business,  the 
officers  whose  function  it  is  to  control  that  agent  or  that 
servant  are  chargeable  with  a  wrong  of  omission.  They  are 
guilty  of  non-feasance  in  the  performance  of  their  official 
duties.  If  their  omission  to  prevent  the  infringement  is  the 
result  of  gross  inattention  on  their  part,  they  are  liable  to 
the  corporation  for  any  loss  it  may  incur  on  account  of  the 
infringement ;  but  it  is  otherwise  if  the  omission  resulted 
from  an  error  of  judgment.1  Whether  such  an  officer  is 
liable  at  common  law  to  the  owners  of  the  patent  infringed, 
seems  to  depend  upon  other  considerations. 

If  an  officer,  in  pursuance  of  his  general  authority,  directs 
a  servant  of  a  corporation  to  make  a  machine  for  a  particular 
purpose,  which  machine  may  be  made  so  as  to  infringe  a 
patent,  or  may  be  made  so  as  not  to  have  that  effect,  it 
seems  that  the  officer  is  bound  to  see  that  it  is  not  made  so 
as  to  infringe,  and  that  if  the  servant  makes  it  in  that  way, 
the  officer  is  liable  to  the  patentee.8  But  if  a  servant  of  a 
corporation,  without  any  special  orders  to  do  so,  makes  or 
uses  or  sells  a  thing  which  turns  out  to  be  an  infringement 
of  a  patent,  it  seems  that  no  superior  officer  is  personally 
liable  therefor  at  common  law.3  It  appears  reasonable 
that  officers  of  corporations  should  be  bound  to  see  that 
whatever  they  cause  to  be  done  is  done  lawfully  ;  but  it 
would  perhaps  not  be  ordinarily  right  to  make  them  per- 
sonally responsible  to  strangers  for  acts  spontaneously 
committed  by  their  subordinates. 

§  414.  Directors  of  corporations,  unlike  other  officers, 
act  only  in  a  collective  capacity.  Where  an  entire  board  of 
directors  unanimously  orders  a  particular  thing  to  be  done 
which  will  constitute  an  infringement  of  a  patent,  and  where 
that  thing  is  accordingly  done  by  the  corporation's  agents 
or  servants,  there  seems  to  be  no  reason  why  those  directors 
should  not  be  held  personally  liable  to  an  action  for  that 


1  Spering's  Appeal,  71  Pennsylva-      (Mass.),  435,  1862. 

nia  State,  11,  1872.  3  See  Bath  v.  Caton,  87  Michigan, 

2  See  Hewett  v.   Swift,    3  Allen      202,  1877. 


322  COURTS   PARTIES   AND   CAUSES.  [CHAP.  XVII. 

infringement.  If  the  corporation  is  alone  liable  in  such  a 
case,  then  crafty  and  dishonest  men  may  often  manage  to 
divide  the  spoils  of  infringement,  and  leave  nothing  but  an 
insolvent  or  dormant  corporation  to  be  sued  by  the  patentee. 
It  would  evidently  be  a  reproach  to  our  laws  if  such  a 
scheme  could  be  made  to  work.  Whoever  attempts  to 
defend  the  legal  safety  of  such  a  mode  of  reaping  the  harvest 
of  another,  should  have  his  attention  called  to  the  following 
sentence,  written  by  Justice  CAMPBELL,  and  approved  by 
the  Supreme  Court,  and  worthy  to  be  quoted  in  every  law- 
book,  and  remembered  by  every  man.  "  It  is  certainly  true 
that  the  law  will  strip  a  corporation  or  individual  of  every 
disguise,  and  enforce  a  responsibility  according  to  the  very 
right,  in  despite  of  their  artifices." 

Where  the  action  of  a  board  of  directors  in  ordering  an 
infringement  results  from  the  votes  of  a  majority  only,  the 
relations  of  the  minority  voters  to  the  resulting  infringement 
must  be  different  from  that  of  the  others.  The  members 
of  the  minority  ought  not,  in  such  a  case,  to  be  held  liable 
for  the  action  of  the  board,  or  for  its  results,  unless  they 
afterward  adopt  it  by  ratification.  Where  an  infringement 
is  ordered  by  a  quorum  of  a  board  of  directors,  in  the 
absence  of  the  residue,  the  residue  will  be  free  from  com- 
mon law  liability  for  the  wrong  unless  they  afterward  ratify 
it,  or  unless  they  are  chargeable  with  such  gross  non-attend- 
ance upon  the  meetings  of  the  board  as  justly  causes  them 
to  be  held  responsible  for  whatever  is  done  by  their  col- 
leagues in  their  absence.  The  mere  fact  of  being  a  director 
in  a  corporation  is  not  sufficient  to  render  a  person  liable 
at  common  law  for  any  tort  committed  by  that  corporation 
or  its  managers  or  agents.3 

§  415.  But  there  is  a  statutory  liability  in  such  cases  as 
those  which  we  are  considering.  Most  of  the  States  have 
statutes  which  provide  that,  under  various  circumstances 


1  York  and  Maryland  Line  Rail-         2  Arthur   ».    Griswold,    55   New 
road  Co.  v.  Winans,  17  Howard,  40,      York,  406,  1874. 
1854. 


CHAP.  XVII.]          COUETS   PARTIES   AND   CAUSES.  323 

therein  specified,  the  officers,  directors,  or  stockholders  of  a 
corporation  shall  be  personally  liable  for  its  debts  or  liabili- 
ties. Section  721  of  the  Kevised  Statutes  of  the  United 
States  provides  that  "  The  laws  of  the  several  States,  except 
where  the  Constitution,  treaties,  or  statutes  of  the  United 
States  otherwise  require  or  provide,  shall  be  regarded  as 
rules  of  decision  in  trials  at  common  law,  in  cases  where 
they  apply."  Under  this  section  of  the  Kevised  Statutes, 
these  laws  of  the  States  will  probably  have  the  same  effect 
in  a  patent  suit  in  a  United  States  court,  that  they  would 
have  in  any  action  of  trespass  on  the  case  in  a  State  court.1 
Such  of  the  State  statutes  referred  to  as  make  stockholders, 
officers,  or  directors  responsible  for  the  "liabilities"  of 
their  corporations  are  clearly  broad  enough  to  cover  liabili- 
ties arising  out  of  infringements  of  patents.  Indeed  Justice 
STORY  decided  that  such  liabilities  were  covered  by  the 
word  "  debts"  in  such  a  statute.2  In  most  of  the  States 
the  statutory  individual  liability  of  officers,  directors,  and 
stockholders  of  corporations  is  more  limited  than  it  was  in 
Massachusetts  when  Justice  STORY' made  that  decision.  It 
is  outside  the  scope  of  this  text-book  to  set  forth  the  details 
of  the  State  statutes  which  bear  upon  the  point.  It  will 
frequently  happen  that  the  controlling  legislative  edicts 
which  relate  to  the  matter  will  be  found  in  the  special 
charters  of  particular  corporations,  rather  than  in  the  gen- 
eral statutes  of  the  several  States.  The  general  principle 
which  runs  through  all  such  laws  seems  to  be  that  where  a 
corporation  is  so  managed  that  it  cannot  be  made  to  respond 
to  lawful  claims  based  on  its  contracts  or  torts,  those  officers 
or  directors  who  caused  that  inability,  or  those  officers, 


1  McCluny  v.  Silliman,  3  Peters,  1867;  Parker  t>.  Hall,  2  Fisher.  62, 

270,  1830  ;  McNeil  v.  Holbrook,  12  1857;  Parker  v.  Hawk,  2  Fisher,  58, 

Peters,  84,  1838;  Vance  W.Campbell,  1857;   Rich®.  Ricketts.  7  Blatch. 

1  Black,  427,  1861;  Haussknecht  v.  230,  1870;  Haydena.  Oriental  Mills, 

ClajT)ool,l  Black,  431, 1861 ;  Wright,  15  Fed.  Rep.  605,  1883. 

0.  Bales,  2  Black,  535, 1862;  Leffing-  9  Carver  v.  Mfg.  Co.  2  Story,  448, 

well  v.  Warren,  2  Black,  599,  1862;  1843. 
Hanger  t>.  Abbott,  6  Wallace,  537, 


324  COURTS  PARTIES  AND   CAUSES.  [CHAP.  XVII. 

directors,  or  stockholders  who  profited  thereby,  shall  be 
made  to  respond  in  its  place. 

§  416.  A  consolidated  corporation  is  liable  to  actions  in 
equity  for  infringements  committed  before  the  consolida- 
tion, by  each  of  its  constituents,  if  the  property  and  fran- 
chises which  the  consolidated  corporation  acquired  from 
that  constituent,  were  of  sufficient  value,  over  and  above  all 
paramount  claims,  to  equal  the  profits  or  damages  sought 
to  be  recovered  in  such  actions.1  This  proposition  results 
from  the  fact  that  equity  regards  the  property  of  a  corpora- 
tion as  held  in  trust  for  the  payment  of  its  debts,  and  recog- 
nizes the  right  of  creditors  to  pursue  that  property  into 
whosesoever  possession  it  may  be  transferred,  unless  it  has 
passed  into  the  hands  of  a  bonajide  purchaser.8 

The  liability  of  consolidated  corporations  to  actions  at 
law,  for  infringements  committed  by  their  constituent  cor- 
porations, before  the  consolidation,  is  a  matter  which  does 
not  rest  on  common  law  principles,  so  much  as  upon  the  stat- 
utes of  the  States  wherein  those  consolidated  corporations 
came  into  being,  or  upon  the  private  Acts  which  authorized 
the  consolidations,  or  upon  the  charters  of  the  constituent  or 
of  the  consolidated  companies.  Whenever  occasion  arises 
to  hold  a  consolidated  corporation  liable  to  an  action  at 
law  for  such  a  cause,  a  proper  authority  for  so  doing  can 
probably  always  be  found  in  one  or  another  of  these  sources. 

§  417.  A  plurality  of  patents  may  be  sued  upon  in  one 
action,  where  the  inventions  covered  by  those  patents,  are 
embodied  in  one  infringing  process,  machine,  manufacture, 
or  composition  of  matter ; 3  but  not  otherwise.4  But  any 

1  Sayles  ».  The  Lake  Shore  and  Mfg.  Co.  v.  Railroad  Co.  15  Blatch. 
Michigan    Southern    Railway    Co.  444,    1879 ;    Gamewell    Fire-Alarm 
Manuscript,  1878.  Telegraph  Co.  «.  Chillicothe,  7  Fed. 

2  Mumma  v.  Potomac  Co.  8  Peters,  Rep.  351,  1881 ;  Nellis  v.  Mfg.  Co.  13 
286,  1834 ;  Curran  v.  Arkansas,  15  Fed.  Rep.  451,  1882;  Lillieudahl  «. 
Howard,  311,  1853;  Railroad  Co.  v.  Detwiller,  18  Fed.  Rep.  177,  1883  ; 
Howard,  7  Wallace,  409,  1868.  Consolidated  Electric  Light  Co.  v. 

3  Seymour  v.  Osborne,  11  Wallace,  Electric  Light  Co.  20  Fed.  Rep.  502, 
516,  1870;  Bates  «.  Coe,  98  U.  S.  48,  1884;  Griffith??.  Segar,  29  Fed.  Rep. 
1878;  Nourse  0.  Allen,  3  Fisher,  63,  707,  1887. 

1859 ;    Gillespie    v.    Cummings,    8          4  Nellis  v.  McLanahan,  6  Fisher, 
Sawyer,  259,  1874;  Herman  Patent      286,  1873;  Hayes  v.  Dayton.  8  Fed. 


CHAP.  XVII.]          COUBTS   PARTIES   AND   CAUSES.  325 

action  based  on  alleged  infringement,  in  one  process  or 
thing,  of  a  plurality  of  patents,  may  be  sustained  by  evi- 
dence that  one  of  those  patents  was  so  infringed,  though 
the  others  were  not ; '  and  an  action  brought  for  alleged  un- 
lawful making,  using  and  selling  may  be  sustained  by  evi- 
dence of  either  of  those  three  sorts  of  infringement.3  So 
also,  an  action  may  be  based  on  infringement  committed 
during  the  first  term,  and  on  infringement  committed  dur- 
ing an  extended  term,  of  any  patent,  and  may  be  sustained 
on  proof  of  either  or  both  of  those  infringements.  And 
several  actions  may  be  based  on  several  infringements  of 
the  same  patent,  committed  at  different  times  by  the  same 
inf  ringer.3 

Rep.  702,  1880;  Barney  t>.  Peck    16  86,  1880. 

Fed.  Rep.  413, 1883;  Hayes  v.  Bick-          2  Locomotive  Truck  Co.  •».  Rail- 

elhoupt,  23  Fed.  Rep.  184, 1885;  Hu-  way  Co.  10  Blatch.  293,  1872. 
ber  v.  Sanitary  Depot,  34  Fed.  Rep.          3  Roemer  v.  Neumann,   23  Fed. 

752,  1888.  Rep.  447,  1885. 
1  Matthews  «.  Mfg.  Co.  18  Blatch. 


CHAPTEE  XVIII. 


ACTIONS  AT  LAW. 


418.  Actions  of  trespass  on  the  case. 

419.  The  question  of  the  propriety 
of  actions  of  assumpsit  for  in- 
fringements of  patents,  consid- 
ered in  the  light  of  precedents. 

420.  Considered  in  the  light  of  ex- 
pediency. 

421.  Forms    of    civil    actions  pre- 
scribed   by    State    codes    and 
statutes   where    applicable    to 
patent  cases. 

422.  Declarations  in  trespass  on  the 
case.    • 

423.  The  statement  of  the  right  of 
action,  in  respect  of  the  inven- 
tor. 

424.  In  respect  of  the  novelty  and 
utility  of  the  invention. 

425.  In  respect  of  the  absence  of 
public  use  or  sale  more  than 
two  years  before  application  for 
a  patent. 

426.  In    respect    of    the   patentee, 
where  he  is  another  than  the 
inventor. 

427.  In  respect  of  the  application 
for  the  patent. 

428.  In  respect  of  the  letters  patent. 

429.  In  respect  of  a  reissue. 

430.  In  respect  of  a  disclaimer. 

431.  In  respect  of  an  extension. 

432.  In    respect    of    the   plaintiff's 
title. 

433.  In  respect  of  profert. 

434.  In  respect  of  infringement. 


435.  In  respect  of  the  time  of  in- 
fringement. 

436.  In  respect  of  the  damages. 

437.  The  conclusion  of  the  declara- 
tion. 

438.  Substantial  and  not  technical 
accuracy  required  in   declara 
lions. 

439.  Dilatory  pleas. 

440.  Twenty- seven  defences  plead- 
able  in  bar  in  patent  actions. 

441 .  The  twenty -seven  defences  re- 
viewed in  respect  of  their  na- 
tures and  effects. 

442.  Special  pleading. 

443.  The  general  issue  accompanied 
by  a  statutory  notice  of  special 
matter. 

444.  Notices  of  special  matter. 

445.  Defences    based    on    facts    of 
which  courts  take  judicial  no- 
tice, need  not  be  pleaded. 

446.  The  first  and  second  defences. 

447.  The  third  defence. 

448.  The  fourth  defence. 

449.  The  fifth  and  six  defences. 

450.  The  seventh  defence. 

451.  The  eighth  defence. 

452.  The  ninth  and  tenth  defences. 

453.  The  eleventh  defence. 

454.  The  twelfth  defence. 

455.  The  thirteenth  defence. 

456.  The  fourteenth  defence. 

457.  The  fifteenth  defence 

458.  The  sixteenth  defence. 

326 


CHAP.  XVIII.] 


ACTIONS   AT   LAW. 


327 


459.  The  seventeenth  defence. 

460.  The  eighteenth  defence. 

461.  The  nineteenth  defence. 

462.  The  twentieth  defence. 

463.  The  twenty-first  defence. 

464.  The  twenty-second  defence. 

465.  The  twenty-third  and  twenty- 
fourth  defences. 

466.  The  twenty-fifth  defence. 

467.  The      twenty-sixth     defence : 
estoppel. 

468.  Estoppel  by  matter  of  record  : 
resjudicata. 

469.  Estoppel  by  matter  of  deed. 

470.  The  twenty -sixth  defence;  how 
pleaded. 

471.  The  twenty-seventh    defence  : 
statutes  of  limitation. 

472.  The  national  statute  of  limita- 
tion. 

473.  Its    operation    on     rights    of 
action    based      upon      patents 
which  expired  prior  to  July  8, 
1864;    and  on  rights  of  action 
based  upon   patents  which  ex- 
pired   between    that   day   and 
July  8,  1870. 

474.  Its    operation     on     rights    of 
action    based     upon    infringe- 
ments committed   before   July 
8,  1870,  of  patents  which  were 
in  force  on   that  day ;  and  on 
rights  of  action  based  upon  in- 
fringements of  patents  commit- 
ted after  that  day  and  before 
June  22,  1874. 

475.  Its  operation  on  rights  of  ac- 
tion based  upon  infringements 
of  original  terms  of  extended 
patents. 

476.  State  statutes  of  limitations  do 
not  apply  to  any  right  of  action 
which  is    attended    to    by  the 
national  statute;  that  is,  to  any 
right  of  action  based  on  an  in- 
fringement   committed    before 
June  22,  1874. 


477.  The  question  of  the  applicabil- 
ity of  State  statutes  of  limita- 
tion to  rights  of  action  for  in- 
fringements    committed    after 
June  22, 1874. 

478.  Replications,    rejoinders,    and 
sur-rejoinders,  where  licenses  or 
releases  are  pleaded. 

479.  Replications,  where  the  national 
statute  of  limitation  is  pleaded. 

480.  Replications    and    rejoinders, 
where  a  State  statute  of  limita- 
tion is  pleaded. 

481.  The  similiter. 

482.  Demurrers. 

483.  Demurrers  to  declarations. 

484.  Demurrers  to  pleas. 

485.  Demurrers  to  replications. 

486.  Joinders  in  demurrer. 

487.  Trial  of  actions  at  law  for  in- 
fringement of  patents. 

488.  Trial  by  jury. 

489.  Rules  of  practice. 

490.  Rules  of  evidence. 

491.  Letters  patent  as  evidence. 

492.  Reissue  letters  patent  are  pri- 
ma  facie  evidence  of  their  own 
validity. 

493.  Extensions  of  patents  are  prima 
facie  evidence  of  their  own  va- 
lidity. 

494.  Letters  patent  presumed  to  be 
in  force  till  the  end  of  the  term 
expressed  on  their  face. 

495.  Evidence  of  title. 

496.  Neither  licenses,  releases,  nor 
omission  to  mark  "  patented  " 
need  be  negatived  in  a  plain- 
tiff's prima  facie  evidence. 

497.  Evidence    of   the   defendant's 
doings. 

498.  Expert  evidence  of   infringe- 
ment. 

499.  Hypothetical  questions  for  ex- 
perts. 

500.  Expert  testimony  relevant  to 
the  state  of  the  art. 


328 


ACTIONS  AT   LAW. 


[CHAP.  xvin. 


501.  Cross-examination  of  experts. 

502.  Evidence  of  damages. 

503.  Defendant's  evidence  in  chief. 

504.  Evidence    to  sustain  the  first 
defence. 

505.  To  sustain  the  second  defence. 

506.  To  sustain  the  third  defence, 
when  based  on  prior  patents. 

507.  When  based  on  prior  printed 
publications. 

508.  When  based  on  prior  knowl- 
edge or  use. 

509.  Rebutting     evidence    to    the 
third  defence,  when  based  on 
prior  knowledge  or  use. 

510.  Rebutting     evidence    to    the 
third  defence,  however  based. 

511.  Evidence  to  sustain  the  fourth 
defence. 

512.  To  sustain  the  fifth  defence. 

513.  The  sixth  defence. 

514.  The  seventh  defence. 

515.  The  eighth  defence. 

516.  The  ninth  defence. 

517.  The  tenth  defence. 

518.  The  eleventh  defence. 

519.  The  twelfth  defence. 

520.  The  thirteenth  defence. 

521.  The  fourteenth  defence. 

522.  The  fifteenth  defence. 

523.  The  sixteenth  defence. 

524.  The  seventeenth  defence. 

525.  The  eighteenth  defence. 

526.  The  nineteenth  defence. 

527.  The  twentieth  defence. 

528.  The  twenty-first  defence. 


529.  The  twenty-second  defence. 

530.  The  twenty -third  defence. 

531.  The  twenty -fourth  defence. 

532.  The  twenty-fifth  defence. 

533.  The  twenty-sixth  defence. 

534.  The  twenth-seventh  defence. 

535.  How  testimony  is  taken  in  ac- 
tions at  law. 

536.  When  the  judge  may  direct  the 
jury  to  return  a  verdict  for  the 
defendant. 

537.  Instructions  to  juries. 

538.  Verdicts. 

539.  New  trials. 

540.  Trials   by   a   judge  without  a 
jury. 

541.  Trial  by  referee. 

542.  Judgments. 

543.  Costs. 

544.  Costs  under  the  statute. 

545.  Attorney's  docket  fees. 

546.  Clerk's  fees. 

547.  Magistrate's  fees. 

548.  Witness  fees. 

549.  Taxation  of  costs. 

550.  Writs  of  error. 

551.  Bills  of  exception. 

552.  Erroneous  instructions,  and  re- 
fusals to  instruct. 

553.  Exceptions  to  instructions,  and 
to  refusals  to  instruct. 

554.  Time  when  exceptions  must  be 
noted,  and  time  when  bills  of 
exception  must    be    drawn  up 
and  signed. 


§  418.  AN  action  of  trespass  on  the  case,  is  prescribed  by 
the  United  States  statutes,  as  the  proper  legal  remedy,  for 
infringements  of  patents.1  Patent  rights  are  not  based 
upon  the  common  law ;  but  are  founded  wholly  upon  the 
Constitution  and  statutes  of  the  United  States."  Where  a 
statute  creates  a  right,  and  prescribes  a  legal  remedy  for 


1  Revised  Statutes,  Section  4919. 


Section  149  of  this  book. 


CHAP.  XVIII.]  ACTIONS   AT   LAW.  329 

its  enforcement,  it  is  the  general  rule  that  no  other  com- 
mon law  remedy  can  be  used  for  that  purpose.1  Unless 
patent  rights  are  exempt  from  this  rule,  it  will  follow  that 
an  action  of  trespass  on  the  case  is  the  only  action  which 
United  States  courts  can  entertain,  when  sitting  as  common 
law  courts  in  patent  cases.  Whether  patent  rights  are  thus 
exempt,  is  a  question  which  once  arose  in  a  Supreme  Court 
case,  but  which  was  not  decided  because  it  was  apparently 
overlooked  by  the  counsel  and  by  the  court. 

The  case  was  that  of  the  Packet  Co.  v.  Sickles.  It  was 
originally  an  action  of  assumpsit,  based  on  an  alleged  con- 
tract between  the  parties,  relevant  to  compensation  for  the 
use  of  a  patented  machine.  A  recovery  was  adjudged  on 
that  contract  in  the  court  below  ;  but  the  Supreme  Court 
reversed  the  judgment  on  the  ground  that  the  contract  was 
not  in  writing,  and  was  not  to  be  performed  within  one  year, 
and  was  therefore  void  under  the  statutes  of  frauds.2  On 
the  case  being  remanded,  the  plaintiff  amended  the  declara- 
tion by  adding  two  counts  in  assumpsit  for  money  had 
and  received.  The  case  was  thus  changed  from  an  action 
of  assumpsit  on  a  contract,  to  an  action  of  assumpsit  to  re- 
cover compensation  for  the  infringement  of  a  patent.  The 
defendant  did  not  notice  the  questionable  propriety  of  an 
action  of  assumpsit  for  that  purpose,  and  therefore  pleaded 
non-assumpsit.  The  jury  found  for  the  plaintiff,  and  having 
been  instructed  by  the  court  to  assess  the  damages  on  the 
basis  of  the  value  of  the  use  of  the  machine,  it  rendered  a 
verdict  for  $11,333,  with  interest  from  the  day  when  the 
suit  was  brought. 

Now  if  an  action  of  assumpsit  had  been  proper,  it  would 
be  difficult  to  show  any  impropriety  in  the  charge  of  the 
court,  though  in  an  action  of  trespass  on  the  case  it  would 
have  been  clearly  wrong.1  When  the  case  again  reached 


1  Wiley  v.  Yale,  1  Metcalf  (Mass.).  s  Packet  Co.  v.  Sickles,  5  Wallace, 

554, 1840;  Elders  Bemis,  2  Metcalf  580,  1866. 

(Mass.),  604,  1841;  Smith  v.  Wood-  3  Seymour  v.  McCormick,  16  How- 
man,  8  Foster  (28  K  H.),  528,  1854.  ard,  480,  1853. 


V 

330  ACTIONS  AT   LAW.  [CHAP.  XVIII. 

the  Supreme  Court,  it  was  again  reversed ;  this  time  be- 
cause the  charge  did  not  conform  to  the  precedents  relevant 
to  the  measure  of  damages  in  actions  at  law  for  infringe- 
ments of  patents.  But  no  due  notice  appears  to  have  been 
taken  of  the  fact  that  the  case  at  bar  was  an  action  of 
assumpsit,  while  those  precedents  had  been  established  in 
actions  of  trespass  on  the  case.1  Had  that  distinction  been 
attended  to,  the  court  could  hardly  have  sustained  the  pro- 
priety of  the  form  of  action,  and  at  the  same  time  have  re- 
versed the  case  for  error  in  the  charge.  The  suit  was 
treated  precisely  as  though  it  had  been  an  action  of  tres- 
pass on  the  case.  If  the  court  had  meant  to  affirm  the  pro- 
priety of  actions  of  assumpsit  for  infringements  of  patents, 
it  would  not  have  so  treated  the  suit ;  for  its  ruling  would 
seem  to  be  inappropriate  to  that  form  of  action.  The  pre- 
cedent is  therefore  not  fairly  citable  on  either  side  of  the 
question  of  the  propriety  of  an  action  of  assumpsit  for  the 
infringement  of  a  patent. 

§  419.  That  an  action  of  assumpsit  may  be  based  on  an 
infringement  of  a  patent,  has  been  stated  to  be  the  law  by 
at  least  two  United  States  judges.2 

In  the  first  case  cited,  Judge  HUGHES  said  :  "  Let  us  now 
suppose  the  case  of  a  person  who  takes  possession  of  and 
uses  another's  horse,  wagon  and  team,  or  threshing-ma- 
chine, without  his  knowledge,  consent,  or  authority.  .  ,  .  In 
such  a  case,  the  owner  may  recover  damages  in  trespass 
for  the  tort ;  or  he  may  waive  the  tort,  and  sue  in  assumpsit 
on  the  implied  promise  to  pay  what. is  equitably  due  for  the 
use  and  possession  of  the  property.  .  .  .  The  case  I  have 
supposed  is,  in  principle,  precisely  the  case  we  have  at  bar, 
for  there  is  no  magical  quality  in  the  property  of  a  patentee 
in  his  patent  to  distinguish  this  case  from  the  one  just  sup- 
posed, where  ordinary  property  had  been  taken  and  used 
without  the  owner's  consent.  .  .  .  The  act  of  the  defend- 

1  Packet  Co.  v.   Sickles,  19  Wai-  4  Bann.  &  Avd.  245,  1879 ;  Steam 
lace,  617,  1873.  Stone  Cutter  Co.   v.   Sheldons,  15 

2  Sayles  v.  Richmond,  Fredericks-  Fed.  Rep.  609,  1883. 
burg  &  Potomac  Railroad  Company, 


CHAP.  XVIII.]  ACTIONS  AT  LAW.  331 

ant  was  nothing  but  the  simple  one  of  a  person  taking  and 
using  another's  property,  without  authority,  to  his  own  ad- 
vantage, and  incurring  a  liability  to  compensate  the  owner 
for  such  use  of  the  property.  The  case  is,  in  principle, 
precisely  identical  with  that  of  such  a  use  of  a  horse,  or  a 
boat,  or  a  wagon  and  team,  or  threshing-machine — giving  a 
right  of  action  in  assumpsit." 

In  the  second  case  Judge  WHEELER  said :  "  When  the 
Windsor  Manufacturing  Company  sold  machines,  embody- 
ing these  inventions,  to  the  defendants  for  use,  it  invaded 
the  orator's  rights  and  converted  the  orator's  property  to 
its  own  use.  These  acts  were  tortious,  and  an  action  would 
lie  for  these  wrongs.  As  that  company  received  money  for 
the  orator's  property,  the  orator  could  waive  the  tort,  and 
sue  in  assumpsit  for  the  money,  or,  what  is  the  same  in 
effect,  proceed  for  an  account  of  the  money  received.  In 
an  action  or  proceeding  for  the  money,  the  measure  of 
damages  would  be  the  amount  of  money  received,  not  the 
amount  of  damage  done,  and  all  right  of  recovery  beyond 
that  would  be  waived." 

§  420.  It  is  against  the  policy  of  the  law  that  the  owner 
of  a  patent  right  should  lose  by  reason  of  its  infringement. 
To  prevent  such  a  result,  the  action  of  trespass  on  the  case 
is  well  adapted,  because  it  measures  the  plaintiff's  recovery 
by  the  plaintiff's  loss.  But  it  is  also  against  the  policy  of 
the  law  that  an  infringer  should  gain  by  reason  of  his  in- 
fringement. To  prevent  such  a  result,  the  action  of  tres- 
pass on  the  case  is  not  well  adapted,  because  an  infringer 
may  often  gain  far  more  than  the  patentee  loses  by  reason 
of  the  wrongful  act  of  the  former.  Patents  are  peculiar 
property  in  this  respect.  A  horse  or  a  wagon  is  worth 
about  as  much  to  one  man  as  to  another,  but  the  use  of  a 
patent  may  be  worth  ten  times  as  much  to  a  rich  infringer 
as  to  a  poor  patentee.  It  would  be  a  reproach  to  the  patent 
laws  if  any  infringer  could  unlawfully  make,  use,  and  sell 
specimens  of  his  neighbor's  patented  invention,  and,  when 
called  to  account  in  a  court  of  justice,  could  cancel  his 
liability  by  paying  one  tenth  of  the  proceeds  of  his  tort  to 


332  ACTIONS   AT   LAW.  [CHAP.  XVIII. 

the  owner  of  the  patent.  No  complete  system  of  law  offers 
such  a  premium  for  its  own  violation.  To  prevent  such 
failures  of  justice,  it  was  long  the  theory  and  the  practice 
of  the  United  States  courts,  that  equity  had  jurisdiction  to 
enforce  a  patentee's  right  to  recover  an  infringer's  profits, 
independently  of  all  other  equitable  titles,  rights,  and 
remedies.1  But  that  theory  was  overruled,  and  that  prac- 
tice was  stopped  by  the  Supreme  Court,  in  the  case  of  Root 
v.  Railway  Co.*  The  new  rule  which  was  stated  and  en- 
forced in  that  case,  calls  aloud  upon  courts  of  law  to  enter- 
tain actions  of  assumpsit  for  infringements  of  patents,  if  by 
any  means  they  can  find  authority  for  so  doing.  If  no  such 
authority  can  be  deduced  from  the  common  law,  then  it 
ought  to  be  conferred  by  legislation  ;  for  unless  it  exists  or 
is  supplied,  it  must  often  happen  in  the  future  that  in- 
fringers  will  profit  by  their  infringements  far  more  than  in- 
ventors can  profit  by  their  inventions. 

§  421.  A  majority  of  the  States  have  abolished  all  com- 
mon law  actions,  and  have  substituted  for  the  whole  of  them  a 
single  form  of  proceeding  which  they  call  a  civil  action.  The 
United  States  statutes  provide  that  "  The  practice,  plead- 
ings, and  forms  and  modes  of  proceeding  in  civil  causes, 
other  than  equity  and  admiralty  causes,  in  the  circuit  and 
district  courts,  shall  conform,  as  near  as  may  be,  to  the 


1  Stevens  v.  Kansas  Pacific  Rail-  U.  S.  68,  1876;  Vaughan  v.  East 
way  Co.  5  Dillon,  486,  1879;  Nev-  Tennessee,  Virginia  &  Georgia  Kail- 
ins  0.  Johnson,  3  Blatch.  80.  1853;  road  Co.  2  Bann.  &  Ard.  537,  1877; 
Sickles  v.  Mfg.  Co.  1  Fisher,  222,  Vaughan  v.  Central  Pacific  Railroad 
1856;  Jenkins  v.  Greenwald,  2  Fish-  Co.  3  Bann.  &  Ard.  28, 1877;  Sayles 
er,  41,  1857;  Irulay  v.  Railroad  Co.  v>.  Dubuque  &  Sioux  City  Railroad 
4  Blatch.  228,  1858;  Perry  v.  Corn-  Co.  3  Bann.  &  Ard.  219,  1878,  Gor- 
ing, 6  Blatch.  134,  1868;  Howes  v.  don  0.  Anthony,  16  Blatch.  234, 
Nute,  4  Clif.  174,  1870;  Cowing  t>.  1879;  Hendrio  v.  Sayles,  98  U.  S. 
Rumsey,  8  Blatch.  36,  1870;  Packet  546,  1879;  Bignall  v.  Harvey,  18 
Co.  v.  Sickles,  19  Wallace,  611, 1873;  Blatch.  353,  1880;  Atwood  «.  Port- 
Smith  v.  Baker's  Administrators,  1  land  Co.  10  Fed.  Rep.  283,  1880; 
Bann.  &  Ard.  117,  1874;  Wetherill  Stevens  «.  Baltimore  &  Ohio  Rail- 
v.  Zinc  Co.  1  Bann.  &  Ard.  485  road  Co.  6  Fed.  Rep.  283, 1881. 
1874;  Burdell  e.  Denig,  92  U.  S.  *  Root  *.  Railway  Co.  105  U.  S. 
720,  1875;  Birdsall  e.  Coolidge,  93  189,  1881. 


CHAP.  XVIII.]  ACTIONS  AT  LAW.  333 

practice,  pleadings,  and  forms  and  modes  of  proceeding  ex- 
isting at  the  time  in  like  causes  in  the  courts  of  record  of 
the  State  within  which  such  circuit  or  district  courts  are 
held,  any  rule  of  court  to  the  contrary  notwithstanding,"  ' 
and  that  "  Damages  for  the  infringement  of  any  patent  may 
be  recovered  by  action  on  the  case." "  Both  these  appar- 
ently inconsistent  provisions  are  contained  in  the  same 
enactment.  They  must  therefore  be  construed  together; 
and  effect  must  be  given  to  both.  This  result  is  reached 
by  following  Section  4919  as  far  as  it  necessarily  goes,  and 
by  conforming  in  other  respects  to  Section  914J"  With 
this  view,  it  has  been  held  that  the  complaints  and  petitions 
which  are  prescribed  for  civil  actions  by  the  codes  of  sun- 
dry of  the  States,  may  be  used  in  bringing  actions  on  the 
case  for  infringements  of  patents  in  Federal  Courts  sit- 
ting in  those  States,  respectively ;  *  and  indeed,  in  one  case, 
it  has  been  held  that  the  forms  of  pleading  and  procedure 
in  such  an  action  in  a  Federal  Court  must  be  the  same  as 
those  employed  in  civil  actions  in  the  State  Courts  of  the 
State  in  which  that  Federal  Court  is  located.5  But  the 
forms  of  pleading  and  procedure  in  those  States  which  have 
abolished  common  law  actions,  and  substituted  a  single 
civil  action  therefor,  are  so  variant  in  character,  in  those 
different  States,  that  no  explanation  of  any  of  them  would 
be  suitable  here.  It  may  however  be  useful  to  explain  in 
this  book  the  characteristics  of  such  a  declaration,  in  an 
action  of  trespass  on  the  case,  as  is  proper  to  be  filed  in  be- 
ginning a  suit  for  an  infringement  of  a  patent  in  the  Federal 
Courts  in  those  States  which  still  employ  that  common  law 
action. 

§  422.  The  proper  parts  of  such  a  declaration  are  the  fol- 
lowing :  1.  The  title  of  the  court.     2.  The  title  of  the  term. 


1  Revised  Statutes,  Section  914.  *  May  v.   County  of  Mercer,  30 

8  Revised  Statutes,  Section  4919.  Fed.  Rep.  250,  1887. 

3  Cottier  ».  Stimson,  18  Fed.  Rep.  5  Celluloid  Mfg.  Co.  «.  Zylonite 

690,  1883.  Co.  34  Fed.  Rep.  744,  1888. 


334  ACTIONS   AT   LAW.  [CHAP.  XVIII. 

3.  The  venue.  4.  The  commencement.  5.  The  statement 
of  the  right  of  action.  6.  The  conclusion. 

The  true  title  of  the  United  States  Circuit  Court  estab- 
lished in  Connecticut  is  "  Circuit  Court  of  the  United  States, 
for  the  District  of  Connecticut,"  and  the  title  of  the  circuit 
court,  which  is  established  in  any  other  district  is  the  same, 
except  as  to  the  name  of  the  district.1 

The  proper  term  of  the  court  in  which  to  entitle  the 
declaration  is  the  term  at  which  the  appearance  of  the 
defendant  is  due.2  It  is  unnecessary  to  entitle  a  declara- 
tion in  the  name  of  the  case  in  which  it  is  filed ;  though  it 
is  convenient  to  indorse  that  name  on  the  back  of  the  de- 
claration, for  the  purpose  of  enabling  the  document  to  be 
readily  found  in  a  file. 

The  venue  should  be  laid  in  the  district  where  the  action 
is  commenced,  regardless  of  the  district  or  districts  wherein 
the  infringement  was  committed.3  An  infringement  suit, 
being  based  on  a  transitory  cause  of  action,  the  place  laid 
in  the  declaration  draws  to  itself  the  trial  of  all  questions 
of  infringement,  wherever  committed ;  except  in  the  single 
case  where  the  United  States  statutes  otherwise  provide/ 

The  commencement  contains  a  statement  of  the  names  of 
the  parties  to  the  action,  and  of  the  capacity  in  which  they 
respectively  sue  or  are  sued,  if  it  is  other  than  a  natural 
personal  capacity.  Though  it  is  probably  unnecessary,  it 
is  undoubtedly  prudent  to  state  the  nation  of  which  the 
parties  are  respectively  citizens,  and  if  that  nation  is  the 
United  States,  to  allege  also  the  particular  State  of  which 
the  parties  are  citizens  respectively.  Where  either  party  is 
a  corporation,  that  fact  must  be  stated,  and  the  name  of  the 
State  or  other  sovereignty  wherein  it  was  created  and  exists 
should  also  be  alleged.  The  commencement  properly  closes 
with  a  brief  recital  that  the  form  of  action  is  that  of  trespass 
on  the  case. 

1  Revised  Statutes,  Section  608.  248,  1843. 

2 1  Cbitty  on  Pleading,  15  Ameri-  4  Revised  Statutes,    Section  657  ; 

can  Edition,  p.  263.  Section  390  of  this  book. 
3  McKenna  «.   Fisk,   1    Howard, 


CHAP.  XVIII.]  ACTIONS   AT   LAW.  335 

§  423.  The  statement  of  the  right  of  action  should  contain 
the  name  and  residence  of  the  inventor,  in  order  to  identify 
him,  and  to  enable  the  defendant  to  make  inquiries  into  the 
history  of  the  alleged  invention.  If  that  name  or  that  resi- 
dence were  concealed  from  the  defendant,  he  might  thereby 
be  deprived  of  the  means  of  learning  of  several  perfect  de- 
fences. As  the  statutes  stand  at  present,  there  is  no  neces- 
sity for  stating  the  citizenship  of  the  inventor  in  any  decla- 
ration, unless  the  inventor  is  also  a  party  to  the  action. 
Such  a  necessity  will  however  arise  whenever  Congress  dis- 
criminates between  citizens  of  the  United  States  and  citizens 
of  other  countries,  in  respect  of  the  terms  upon  which  it 
may  authorize  patents  to  be  granted. 

§  424.  The  novelty  and  the  utility  of  the  invention  must 
be  put  in  issue  by  proper  averments  in  the  declaration  ;  but 
it  is  not  necessary  to  state  the  particular  time  at  which  the 
invention  was  made,  so  that  it  appears  to  have  been  made 
before  the  application  for  the  patent  was  filed.1  The  cir- 
cumstance that  letters  patent  are  themselves  prima  fcwie 
evidence  of  novelty  and  utility,  does  not  render  unneces- 
sary a  proper  allegation  of  those  facts  in  the  declaration. 
Evidence  cannot  take  the  place  of  pleading,  and  proper 
pleading  is  necessary  to  make  any  kind  of  evidence  admis- 
sible in  support  of  the  right  of  a  patentee  to  recover  for  an 
infringement  of  his  patent. 

§  425.  The  statement  of  the  right  of  action  must  also 
aver  that  the  invention  was  not  in  public  use  or  on  sale  for 
more  than  two  years  before  the  inventor's  application  for 
the  patent ;  because  that  fact  is  one  of  those  which  are 
necessary  to  give  the  Commissioner  of  Patents  jurisdiction 
to  grant  such  a  document.2  It  is  a  fact  which  is  of  the 
essence  of  the  right  of  action,  and  it  must  therefore  be 
stated  in  the  declaration.3 


1  Wilder  «.  McCormick,  2  Blatch.  Court  Reports,  482,  1817  ;  Blessing 

31,  1846.  •»•  Copper  Works,  34  Fed.  Rep.  754, 

s  Revised  Statutes,  Sections  4886.  1888. 
3  Gray  ®.  James,  1  Peters'  Circuit 


336  ACTIONS  AT  LAW.  [CHAP.  XVIII. 

§  426.  If  the  patentee  is  neither  a  party  to  the  action,  nor 
the  inventor  of  the  thing  or  process  covered  by  the  patent, 
it  is  natural  and  proper  to  separately  state  his  name  'in 
order  to  fully  and  surely  identify  the  patent.  It  is  well 
also  to  state  his  residence  and  his  citizenship,  though  there 
is  at  present  no  requirement  of  law  on  either  of  those 
points. 

§  427.  It  is  not  necessary  to  state  in  a  declaration  the 
particulars  of  the  application  for  the  letters  patent,  nor  the 
particulars  of  the  proceedings  of  the  Patent  Office  in  con- 
sidering that  application,  because  the  courts  will  presume 
that  everything  was  rightly  done  which  the  law  required  to 
be  done  in  order  to  authorize  the  Commissioner  to  issue 
the  patent.1  It  is  customary  and  proper  to  say  in  a  decla- 
ration that  the  inventor  made  due  application  for  letters 
patent,  but  not  even  that  general  allegation  appears  to  be 
required.2 

§  428.  The  declaration  may  describe  the  patent  in  the  lan- 
guage of  the  grant,  and  it  is  not  necessary  to  set  out  the 
specification  either  verbatim  or  substantially  ; 3  though  it  is 
not  improper,  except  in  point  of  prolixity,  to  incorporate 
the  whole  of  the  patent  and  specification  into  the  declara- 
tion." 

The  declaration  must  state  that  the  letters  patent  were 
issued  in  the  name  of  the  United  States  of  America,  under 
the  seal  of  the  Patent  Office,  and  were  signed  by  the  Secre- 
tary of  the  Interior,  or  an  Assistant  Secretary  of  the  In- 
terior, as  the  case  may  be,  and  countersigned  by  the  Com- 
missioner of  Patents,  and  that  they  were  delivered  to  the 
patentee.5  Inasmuch  as  patents  are  granted  for  various 
spaces  of  time,  it  is  necessary  to  state  the  particular  terms 
for  which  the  letters  patent  in  suit  were  issued.  It  is 


1  Cutting  v.  Myers,  4  Washington,  4  Wilder  v.  McCormick,  2  Blatch. 

221,  1818.  35,  1846. 

4  Wilder  v.  McCormick,  2  Blatch.  5  Revised  Statutes,  Section  4883 ; 

31,  1846.  25  Statutes  at  Large,  Ch.  15,  p.  40; 

3  Cutting  v.  Myers,  4  Washington,  Cutting  v.  Myers,  4  Washington, 

223,  1818.  222,  1818. 


CHAP.  XVIII.]  ACTIONS  AT   LAW.  337 

necessary  also  to  plead  the  legal  effect  of  the  patent,  by 
saying  that  it  did  grant  to  the  patentee,  his  heirs  or  assigns, 
the  exclusive  right  to  make,  use,  and  vend  the  invention 
covered  thereby,  throughout  the  United  States  and  the 
Territories  thereof.1 

§  429.  Where  the  patent  upon  which  the  action  is  based, 
is  a  reissue,  the  original  letters  patent  should  be  set  forth 
precisely  as  though  no  surrender  and  reissue  had  occurred  ; 
and  in  addition  thereto,  it  is  proper  to  state  the  particular 
kind  of  defect  which  made  the  original  a  proper  subject  of 
a  reissue  ;  and  to  state  also  that  such  defect  arose  from  in- 
advertence, accident,  or  mistake,  as  the  case  may  be,  and 
without  any  fraudulent  or  deceptive  intention ;  and  to  state 
that  the  original  patent  was  surrendered,  and  who  surren- 
dered it;  and  to  state  that  the  Commissioner  of  Patents 
caused  a  new  patent  to  be  issued  for  the  same  invention ; 
and  to  state  finally  the  name  of  the  person  to  whom  such 
new  patent  was  granted.  These  particulars  lie  at  the  foun- 
dation of  the  right  of  the  grantee  of  a  reissue  patent  to  re- 
ceive such  a  grant ;  and  although  the  reissue  is  prima  fade 
evidence  that  the  truth  on  all  these  points  is  favorable  to 
the  validity  of  the  patent,  it  is  none  the  less  proper  to  put 
those  facts  in  issue  by  proper  pleading.  If  the  Supreme 
Court  shall  decide  any  of  these  points  of  fact  to  be  con- 
clusively settled  by  the  decision  of  the  Commissioner  in 
granting  a  reissue,  it  will  then  be  unnecessary  to  state  such 
fact  or  facts  in  a  declaration;  but  it  is  hardly  prudent 
otherwise  to  venture  a  case  on  a  more  indefinite  form  of 
pleading ;  though  a  more  indefinite  form  of  pleading  has 
once  been  held  sufficient  in  such  cases.* 

§  430.  Where  a  disclaimer  has  been  filed,  that  fact  ought 
to  be  stated  in  the  declaration  and  its  legal  effect  ought  to 
be  indicated,  because  disclaimers  constitute  amendments  of 
original  patents,  and  operate  to  vary  their  scope.3  In  such 
a  case  also,  the  declaration  ought  to  state  that  the  dis- 


1  Revised  Statutes,  Section  4884.        628,  1885. 

9  Spaeth  v.  Barney,  22  Fed.  Rep.          8  Revised  Statutes,  Section  4917. 


338  ACTIONS   AT   LAW.  [CHAP.  XVIII. 

claimer  was  filed  without  unreasonable  delay,  because  that 
fact  is  necessary  to  the  right  of  a  patentee  to  maintain  a 
suit  on  a  patent  which  required  a  disclaimer.1 

§  431.  Where  the  patent  in  suit  was  extended  by  the 
Commissioner  of  Patents,  and  where  the  action  is  based 
partly  or  wholly  on  its  extended  term,  the  declaration  must 
state  that  the  extension  was  made  in  due  form  of  law,  and 
must  show  that  it  was  made  before  the  expiration  of  the 
original  term.  It  ought  to  state  also  that  the  extension  was 
for  the  term  of  seven  years  from  the  expiration  of  the  first 
term  ;  but  as  that  is  true  of  all  such  extensions,  it  is  possible 
that  the  omission  would  be  an  immaterial  one. 

Where  the  patent  has  been  extended  by  a  special  Act  of 
Congress,  and  where  the  suit  is  partly  or  wholly  based  on 
such  extension,  the  declaration  must  state  the  legal  effect 
of  the  Act  of  extension,  and  it  must  especially  show  the  par- 
ticular space  of  time  covered  thereby. 

§  432.  Where  the  plaintiff  is  an  assignee  or  grantee  of  the 
patentee,  it  is  safer  to  set  forth  all  the  mesne  assignments 
or  grants  down  to  him,  than  merely  to  state,  that  the  exclu- 
sive right  which  was  infringed  by  the  defendant,  came  to 
the  plaintiff  by  assignment  or  by  grant.  This  point  of 
pleading  seems  deducible  by  analogy  from  the  rule  relevant 
to  declaring  on  an  assigned  term,  for  years  of  real  estate.8 
Title  papers  should,  however,  be  set  forth  by  their  legal 
effect,  rather  than  incorporated  bodily  into  the  declaration. 

§  433.  No  profert  need  be  made  in  any  declaration,  of  any 
letters  patent,  disclaimer,  reissue,  or  certificate  of  extension, 
because  all  such  documents  are  matters  of  record  in  the 
Patent  Office.3  Nor  is  any  profert  necessary  of  any  assign- 
ment or  grant  of  any  interest  under  letters  patent,  because, 
although  those  instruments  are  sometimes  under  seal,  they 
are  not  required  to  be  so,4  and  therefore  do  not  fall  within 
the  definition  of  a  deed.6  If,  however,  the  title  of  the  plain- 

I  Revised  Statutes,  Section  4922.  4  Revised  Statutes,  Section  4898. 

8  i  Chitty  on  Pleading,  368.  5  Stephen    on     Pleading,    Ninth 

I 1  Chitty  on  Pleading,  366;  Smith      American  Edition,  437. 
«.  Ely,  5  McLean,  90,  1849. 


CHAP.  XVIII.]  ACTIONS  AT  LAW. 

tiff  is  founded  upon  letters  testamentary  or  letters  of  ad- 
ministration, lie  must  make  profert  of  the  same,  because 
they  constitute  exceptions  to  the  general  rule  that  profert  is 
necessary  only  of  deeds.'  If  profert  is  made  of  any  docu- 
ment of  which  it  is  not  necessary,  it  will  be  treated  as 
mere  surplusage,  and  will  not  entitle  the  defendant  to  oyer.* 
§  434.  Infringement  may  be  stated  in  a  declaration  in 
general  terms.3  Such  a  statement  is  sufficiently  specific  if 
it  plainly  alleges  that  the  defendant,  without  the  leave  or 
license  of  the  owner  of  the  patent,  did  use,  or  that  he  did 
make,  or  that  he  did  sell,  a  specimen  or  specimens  of  the 
thing  or  process  covered  by  the  patent,  within  the  territory 
covered  by  the  plaintiff's  title  thereto,  and  within  the  time 
during  which  the  plaintiff  held  the  title  within  that  territory, 
and  contrary  to  the  form  of  the  Act  of  Congress  in  such 
cases  made  and  provided,  and  against  the  privileges  granted 
by  the  patent.4  This  last  statement,  indeed,  seems  hardly 
necessary,  for  it  is  but  a  conclusion  of  law  from  the  facts 
stated ;  and  the  allegation  that  the  infringement  was  con- 
trary to  the  statute  is  unnecessary,  unless  the  plaintiff  seeks 
to  recover  exemplary  as  well  as  actual  damages."  Nor  is  it 
generally  necessary  in  a  declaration  to  negative  the  hypoth- 
esis of  a  license  ;  for  licenses,  where  they  exist,  may  more 
properly  be  first  mentioned  in  the  pleadings  of  the  defend- 
ant" But  where  the  declaration  shows  that  strangers  to 
the  suit  have  an  exclusive  United  States  license,  it  must 
also  show  that  the  defendant  is  not  lawfully  operating 
thereunder.'  While  an  allegation  of  either  making,  using, 
or  selling  will  be  sufficient  in  a  declaration  to  show  a  cause 
of  action,  no  allegation  of  any  one  of  these  kinds  of  infringe-  . 
ment  will  support  evidence  of  either  of  the  others.  A  decla- 

1  Gould's    Pleading,    Ch.    VITI.       373,  1848. 
See.  43.  e  Gelpcke  «.  Dubuque,  1  Wallace, 

*  1  Chilly  on  Pleading,  366.  222,  1863 ;  Callin  v.  Insurance  Co. 

3  American  Boll  Tel.  Co.  v.  Soulh-  1    Sumner,   440,    1833;    Fischer  «. 
era  Tel.  Co.  34  Fed.  Rep.  803. 1888.  Hayes,  6  Fed.  Rep.  79.  1881. 

4  Cutting  v.  Myers,  4  Washington,          '  Still  «.  Reading,  20  OS.  GaaU 
223,  1818.  1026,  1881. 

*  Parker  v.  Haworth,  4  McLean, 


340  ACTIONS   AT   LAW.  [CHAP.  XVIII. 

ration  ought  therefore  to  allege  as  many  of  them  as  the 
plaintiff  has  any  expectation  of  being  able  to  prove. 

§  435.  The  time  of  the  infringement  is  properly  stated  by 
alleging  that  it  occurred  on  a  specified  day,  and  on  divers 
other  days  between  that  day  and  some  later  specified  date ; 
and  no  plaintiff  will  be  permitted  to  prove  infringement 
outside  of  the  space  of  time  which  he  specified  in  his  decla- 
ration.1 Repeated  infringements  may  be  sued  for  in  one 
action ; 2  but  all  the  infringements  complained  of  in  one  de- 
claration, must  have  been  committed  after  the  plaintiff  ob- 
tained the  title  to  the  patent,  and  before  the  beginning  of 
the  action.  Where  the  plaintiff  is  an  assignee,  and  where 
he  not  only  has  rights  of  action  against  the  defendant,  for 
infringements  committed  after  the  date  of  his  assignment, 
but  also  has  purchased  rights  of  action  against  the  same 
party,  for  infringements  committed  before  such  purchase, 
ke  must,  if  he  sues  at  law,  bring  a  separate  action  for  the 
latter  causes,  and  must  bring  that  action  in  the  name  of  the 
person  who  owned  the  patent  at  the  time  they  accrued. 

§  436.  The  damages  incurred  by  the  plaintiff  on  account 
of  a  defendant's  infringement  must  be  stated  specially,  be- 
cause no  particular  damage  necessarily  arises  from  infringe- 
ments of  patents,  and  therefore  none  is  implied  by  the  law.8 
The  special  damages  to  be  alleged  in  any  particular  case 
depend  upon  the  circumstances  of  that  case ;  depend  upon 
the  particular  criterion  of  damages  upon  which  the  plaintiff 
relies.  The  various  measures  of  damages  in  patent  cases 
are  stated  and  explained  in  the  nineteenth  chapter  of  this 
book.  One  or  more  of  them  will  be  found  to  be  applicable 
to  every  case  which  is  likely  to  arise.  From  among  them, 
the  pleader  may  select  those  which  he  expects  to  be  able  to 
prove  to  be  pertinent,  and  may  then  draw  his  special  state- 
ment of  damages  accordingly.  Such  a  special  statement  is 
required  by  the  substantial  principles  of  pleading,  as  well 


1  Eastman   <o.  Bodfish,   1    Storj ,      32,  1846. 

580,  1941     •  3 1  Chitty  on  Pleading,  396. 

1  Wilder  0.  McCormick,  2  Blatch. 


CHAP.  XVIII.]  ACTIONS  AT   LAW.  341 

as  by  its  technical  rules.  Without  it,  the  defendant  would 
not  be  apprised  of  all  the  issues  of  the  case.  He  would  not 
know,  till  the  day  of  trial,  whether  the  plaintiff  would  prove 
an  established  royalty,  or  prove  interference  with  his  busi- 
ness, or  prove  what  would  be  a  reasonable  royalty,  as  the 
criterion  of  his  damages.  The  defendant  would  therefore 
have  to  go  to  court  provided  with  witnesses  on  all  these 
points,  or  would  have  to  trust  his  sagacity,  and  guess 
which  of  these  points  he  would  be  called  upon  to  meet 
It  was  to  prevent  such  inconveniences  that  written  plead- 
ings were  originally  designed ;  and  for  the  same  purpose 
among  others,  they  are  still  retained  as  a  part  of  actions  in 
courts. 

§  437.  The  conclusion  of  a  proper  declaration  in  a  patent 
case  alleges  that,  by  force  of  the  statutes  of  the  United 
States,  a  right  of  action  has  accrued  to  the  plaintiff,  to 
recover  the  actual  damages  which  the  declaration  specifies, 
and  such  additional  amount,  not  exceeding  in  the  whole 
three  times  the  amount  of  such  actual  damages,  as  the 
court  may  see  fit  to  adjudge  and  order,  besides  costs.  The 
conclusion  ends  with  the  ancient  allegation  of  bringing  suit 

§  438.  A  declaration,  though  not  drawn  in  due  form,  is 
sufficient  for  practical  purposes,  if  it  contains  all  that  is 
essential  to  enable  the  plaintiff  to  give  evidence  of  his  right 
and  of  its  violation  by  the  defendant,  and  affords  to  the  de- 
fendant the  opportunity  of  interposing  every  defence  allowed 
to  him  by  law.1  Courts  do  not  encourage  merely  technical 
objections  to  pleadings,  and  even  on  special  demurrer  will 
seek  to  sustain  those  which,  though  not  technically  accurate, 
are  substantially  sufficient  for  the  real  purposes  of  pleading. 

At  this  point  the  attention  may  turn  from  the  first  plead- 
ing of  a  plaintiff  in  a  patent  action,  and  may  engage  itself 
for  a  while  with  pleadings  which  are  appropriate  to  defend- 
ants in  such  cases. 

§  439.  Dilatory  pleas  in  patent  actions  are  not  materially 
different  in  their  nature  and  operation  from  corresponding 

1  Wilder  v.  McCormick,  2  Blatch.  37,  1846. 


342  ACTIONS   AT   LAW.  [CHAP.  XVIII. 

pleas  in  other  common  law  cases.  It  is  therefore  unneces- 
sary to  treat  those  preliminary  defences  in  this  book.  Re- 
course may  be  had  to  the  standard  works  on  common  law 
pleading,  for  whatever  information  the  patent  pleader  may 
require  upon  the  subject. 

§  440.  The  defences,  which  are  pleadable  in  bar  to  an  ac- 
tion, are  very  numerous  in  the  patent  law,  and  most  of  them 
are  peculiar  to  that  branch  of  jurisprudence.  Where  the 
facts  appear  to  sustain  him  in  so  doing  a  defendant  may 
plead :  1.  That  the  matter  covered  by  the  original  letters 
patent,  was  not  a  statutory  subject  of  a  patent :  or  2.  That 
it  was  not  an  invention  :  or  3.  That  it  was  not  novel  at  the 
time  of  its  alleged  invention :  or  4.  That  it  was  not  useful 
at  that  or  any  other  time:  or  5.  That  the  inventor  actually 
abandoned  the  invention,  before  any  application  was  made 
for  a  patent  therefor :  or  6.  That  he  constructively  aban- 
doned it,  by  not  making  such  application  till  more  than  two 
years  after  it  was  in  public  use  or  on  sale  :  or  7.  That  the  in- 
vention claimed  in  the  original  patent  is  substantially  dif- 
ferent from  any  indicated,  suggested,  or  described  in  the 
original  application  therefor :  or  8.  That  the  patentee  sur- 
reptitiously or  unjustly  obtained  the  patent  for  that  which 
was  in  fact  the  invention  of  another,  who  was  using  reason- 
able diligence  in  adapting  and  perfecting  the  same  :  or  9. 
That  the  invention  was  made  by  another  jointly  with  the' 
sole  applicant :  or  10.  That  it  was  made  by  one  only  of  two 
or  more  joint  applicants :  or  11.  That  for  the  purpose  of 
deceiving  the  public  the  description  and  specification  filed 
in  the  Patent  Office  was  made  to  cover  less  than  the  whole 
truth  relevant  to  the  invention,  or  was  made  to  cover  more 
than  was  necessary  to  produce  the  desired  effect :  or  12. 
That  the  description  of  the  invention  in  the  specification,  is 
not  in  such  full,  clear,  concise,  and  exact  terms  as  to  enable 
any  person  skilled  in  the  art  or  science  to  which  it  apper- 
tains, or  with  which  it  is  most  nearly  connected,  to  make, 
construct,  compound,  and  use  the  same  :  or  13.  That  the 
claims  of  the  patent  are  not  distinct :  or  14.  That  the 
patentee  unreasonably  delayed  to  enter  a  needed  disclaimer : 


GHAP.  XVIII.]  ACTIONS  AT  LAW.  343 

or  15.  That  the  original  patent  was  surrendered  and  re- 
issued in  the  absence  of  every  statutory  foundation  there- 
for :  or  16.  That  the  claims  of  the  reissue  patent  in  suit  are 
broader  than  those  of  the  original,  and  that  the  reissue  was 
not  applied  for  till  a  long  time  had  elapsed  after  the  origi- 
nal was  granted :  or  17.  That  the  reissue  patent  in  suit 
covers  a  different  invention  from  any  which  the  original 
patent  shows  was  intended  to  be  secured  thereby :  or  18. 
That  the  patent  was  extended  without  any  statutory  appli- 
cation therefor :  or  19.  That  the  patent  was  repealed :  or 
20.  That  the  patent  legally  expired  before  the  alleged  in- 
fringement began,  or  before  it  ended :  or  21.  That  the 
patentee  made  or  sold  specimens  of  the  invention  covered 
by  his  patent,  without  marking  them  "  patented,"  and  with- 
out notifying  the  defendant  of  his  infringement :  or  22. 
That  the  plaintiff  has  no  title  to  the  patent,  or  no  such  title 
as  can  enable  him  to  maintain  the  action :  or  23.  That  the  de- 
fendant has  a  license,  which  authorized  part  or  all  of  the  do- 
ings which  constitute  the  alleged  infringement:  or  24.  That 
the  defendant  has  a  release,  discharging  him  from  liability 
on  account  of  part  or  all  of  the  alleged  infringement :  or  25. 
That  the  defendant  is  not  guilty  of  any  infringement  of  the 
patent  upon  which  he  is  sued :  or  26.  That  the  plaintiff  is 
estopped  from  enforcing  any  right  of  action  against  the 
defendant :  or  27.  That  the  cause  of  action  sued  upon  is 
partly  or  wholly  barred  by  some  statute  of  limitation. 

§  441.  The  first  fourteen  of  these  defences  assail  the 
validity  of  original  patents  ;  and  either  of  them,  if  success- 
fully maintained,  will  defeat  any  such  patent,  and  there- 
fore defeat  any  action  based  thereon.  All  of  the  fourteen 
are  also  applicable  to  actions  based  upon  reissue  patents, 
for  though  a  defective  or  insufficient  specification,  or  a  de- 
fective or  insufficient  claim,  or  an  excessive  claim,  can  be 
cured  by  surrender  and  reissue ;  those  faults  are  some- 
times retained  and  sometimes  introduced  in  reissues.1 

The  fifteenth,  sixteenth,  and   seventeenth  of  these  de- 

1  Revised  Statutes,  Section  4916. 


344  *  ACTIONS   AT  LAW.  [CHAP.  XVIII. 

fences  assail  reissues  as  reissues.  To  what  extent  those 
defences,  if  successful,  will  affect  the  patent,  or  the  action, 
are  points  which  are  explained  in  the  chapter  on  reissues.1 

The  eighteenth  defence  applies  only  to  the  extended 
terms  of  such  patents  as  were  extended  by  the  Commis- 
sioner of  Patents.  If  maintained  with  success  on  the  trial 
of  an  action  for  infringement  of  such  an  extended  term, 
such  a  defence  would  be  completely  efficacious ;  because 
the  Commissioner  never  had  jurisdiction  to  extend  any 
patent  without  such  an  application  therefor  as  the  statutes 
required. 

The  nineteenth  defence,  when  true,  will  certainly  be  a 
full  one,  to  any  action  based  on  alleged  infringements  which 
were  committed  after  the  repeal  of  the  patent.  Whether  it 
will  be  a  defence  to  any  infringement  committed  before  that 
time,  will  depend  upon  whether  the  patent  is  repealed  ah 
initio,  or  only  in  future. 

The  twentieth  defence  will  be  available  where  the  de- 
fendant can  prove  that  the  invention  was  patented  with  the 
knowledge  and  consent  of  the  inventor  in  some  foreign 
country  before  it  was  patented  in  the  United  States,  and  that 
such  foreign  patent  expired  before  the  United  States  patent 
purported  to  terminate.  This  defence,  if  successful,  will 
not  affect  the  validity  of  the  patent.  It  will  merely  limit 
the  time  wherein  it  is  capable  of  being  infringed.8 

The  twenty-first  defence,  if  successful,  will  bar  the  ac- 
tion, but  it  will  not  affect  the  patent.  Any  oral  or  written 
notice  of  infringement,  if  given  to  the  defendant  without 
stopping  his  infringement,  will  oust  the  defence  as  to  sub- 
sequent infringements.3 

The  last  six  of  the  twenty-seven  defences  are  all  without 
relevancy  to  the  validity  of  the  patent.  Either  of  them 
may  be  partly  or  wholly  successful,  according  to  the  cir- 
cumstances of  each  action,  regardless  of  the  success  or 
want  of  success  which  may  attend  the  other  twenty-one. 

1  Sections  225  and  249 of  this  book.      tion  v.  Tilden,  14  Fed.   Rep.   740, 
;  "  Section  163  of  this  book.  1882;  Allen  v.  Deacon,  21  Fed.  liep. 

8  New  York  Pharmical  Associa-      122,  1884. 


CHAP.  XVIII.]  ACTIONS   AT   LAW.  345 

§  442.  The  ancient  rules  of  common  law  pleading  would 
require  a  special  plea  for  either  of  the  twenty -seven  de- 
fences, which  are  enumerated  in  Section  440,  save  only  the 
defence  of  non-infringement,  and  sometimes  that  of  want  of 
title.1  But  a  loose  and  unscientific  relaxation  of  that  part 
of  those  rules,  crept  at  one  time  into  practical  pleadings, 
both  in  England  and  America.  The  abuse  was  reformed  in 
England  in  the  fourth  year  of  William  the  Fourth ; *  but  in 
the  United  States  it  has  continued,  except  so  far  as  it  has 
been  limited  or  enlarged  by  legislation  in  particular  States. 
But  there  was  never  any  principle  which  guided  this  de- 
parture from  the  ancient  law,  and  therefore  no  foundation 
for  any  science  of  the  subject.  Where  an  authoritative 
precedent  can  be  found  for  a  particular  relaxation,  that 
particular  relaxation  must  be  regarded.  In  the  absence  of 
such  a  precedent,  the  safe  and  proper  course  is  to  conform 
to  the  ancient  common  law  rules,  unless  the  pleader  is  will- 
ing to  risk  his  defence  upon  the  theory  that  State  statutes 
relevant  to  pleadings  are  binding  on  Federal  courts  when 
trying  patent  actions  of  trespass  on  the  case.  The  text 
writer  believes  that  they  are  not  binding  under  such  circum- 
stances, because  actions  of  trespass  on  the  case  were  first 
prescribed  by  Congress  for  patent  suits  in  1790,3  and  be- 
cause the  law  has  never  since  been  changed  in  that  particu- 
lar, and  because,  therefore,  there  seems  to  be  no  good  cause 
for  holding  that  such  an  action  under  the  Revised  Statutes, 
is  a  different  proceeding  from  what  it  was  under  the  earliest 
of  the  statutes  at  large. 

§  443.  The  patent  statute  provides  that  five  of  the  twenty- 
seven  defences  may  be  made  under  the  general  issue,  ac- 
companied with  a  certain  statutory  notice  of  special  mat- 
ter.4 Those  are  the  defences  which,  in  Section  440  of  this 
book,  are  numbered  thiee,  five,  six,  eight,  and  eleven,  re- 
spectively. In  the  statute,  they  are  mentioned  in  a  different 


1  Stephen  on  Pleading,  160.  4,  p.  111. 

9  Stephen  on  Pleading,  158.  *  Revised  Statutes,  Section  4920. 

3 1  Statutes  at  Large,  Ch.  7,  Sec. 


346  ACTIONS   AT   LAW.  [CHAP.   XVIII. 

order;  ana  indeed  the  fifth  and  sixth  are  there  grouped 
together,  and  the  third  is  there  separated  into  two  parts. 
The  reasons  for  changing  the  classification  in  those  partic- 
ulars are  probably  obvious  to  the  reader.  The  fifth  and 
sixth  defences  are  entirely  distinct  from  each  other  ;  while 
the  third  is  sustained  by  evidence  of  anticipating  matter, 
whether  that  matter  is  a  prior  patent  or  printed  publication 
as  contemplated  by  one  division  of  the  statute,  or  is  a  prior 
knowledge  or  use  as  contemplated  by  another.  Either  of 
these  five  defences  may  also  be  made  under  a  special  plea, 
instead  of  under  the  general  issue  accompanied  by  notice, 
if  the  defendant  so  determines.1  But  if  any  defendant  uses 
both  these  forms  of  pleading  for  any  one  defence,  the  court 
will  on  motion  call  upon  him  to  select  the  one  which  he 
prefers,  and  to  abandon  the  other.8 

§  444.  Notices  of  special  matter  must  be  in  writing,  and 
must  be  served  on  the  plaintiff  or  his  attorney  at  least 
thirty  days  before  the  trial  of  the  case.8  No  such  notice  re- 
quires any  order  of  court  as  a  prerequisite  thereto ;  and 
depositions  taken  before  the  service  of  such  a  notice,  are 
as  admissible  under  it  as  if  taken  afterward.4  It  is  not  the 
purpose  of  the  statute  to  oblige  the  defendant  to  give  notice 
of  anticipating  matter  before  taking  testimony,  and  thus  to 
enable  the  plaintiff  to  tamper  with  the  witnesses.  Its  only 
purpose  is  to  give  the  plaintiff  thirty  days  before  the  trial, 
in  which  to  secure  evidence  to  contradict  the  testimony  of 
the  defendant's  witnesses,  in  c,ase  the  latter  is  untrue. 

Notices  of  want  of  novelty  must  state  the  names  of  the 
prior  patentees,  and  the  dates  of  their  patents,  where  prior 
patents  are  relied  upon ;  and  where  prior  knowledge  or  use 
is  relied  upon,  such  a  notice  must  state  the  names  and 
residences  of  the  persons  alleged  to  have  had  the  prior 
knowledge  of  the  thing  patented,  and  where  and  by  whom 


1  Evans  v.  Eaton,  3  Wheaton,  454,          2  Read  v.  Miller,  2  Bissell,16,  1867. 
1818;  Grant  v.  Raymond,  6  Peters,          3  Revised  Statutes,  Section  4920. 
218,  1832;    Day  v.  Car-Spring  Co.  3          4  Teese  v.  Huntingdon,  23  How- 

Blatch.  181,  1854.  ard,  2,  1859. 


CHAP.  XVIII.]  ACTIONS   AT   LAW.  347 

it  was  used.1  Where  prior  printed  publications  are  relied 
upon  as  negativing  the  novelty  of  the  patented  invention, 
the  statute  does  not  say  how  such  publications  are  to  be 
identified  in  such  notices.  But  the  Supreme  Court  has  de- 
cided that  they  must  be  pointed  out  with  sufficient  definite- 
ness  to  relieve  the  plaintiff  from  making  an  unnecessarily 
laborious  search  therefor.2  In  the  case  just  cited,  a  notice 
was  held  to  be  insufficient,  which  stated  that  the«patented 
thing  was  described  in  a  certain  book  therein  mentioned, 
but  did  not  state  in  what  part  of  that  book  it  was  so  de- 
scribed. Notices  of  prior  knowledge  or  use  are  sufficiently 
specific,  when  they  specify  the  city  in  which  that  knowledge 
or  use  existed  or  occurred,  and  give  the  names  of  persons 
who  had  that  knowledge,  or  who  engaged  in  that  use,  and 
state  in  what  city  those  persons  reside.3  That  is  to  say : 
the  word  "  where "  and  the  word  "  residence,"  as  those 
words  are  used  in  the  statute,  refer  to  cities,  villages,  or 
towns,  as  the  case  may  be,  and  do  not  refer  to  particular 
houses,  factories  or  farms. 

The  names  of  witnesses  as  such  need  not  be  mentioned  in 
a  notice,  yet  it  is  often  necessary  to  use  as  witnesses,  per- 
sons who  are  named  in  the  notice  as  having  been  engaged 
in  the  prior  use  to  be  proved,  or  as  having  known  of  the 
anticipating  process  or  thing.  Accordingly  where  a  notice 
alleges  that  A.  B.  used  an  anticipating  machine  in  a  certain 
city,  and  that  C.  D.  had  knowledge  of  that  prior  use,  those 
facts  may  both  be  proved  by  E.  F.  without  mentioning  his 
name  in  the  notice.4  But  if  A.  B.  is  the  only  available  per- 
son by  whom  to  prove  his  prior  use,  or  if  his  testimony  on 
that  point  is  to  be  taken  together  with  that  of  others,  his 
name  must  still  be  mentioned  in  the  notice  :  mentioned  not 
as  a  witness  to  be  called  to  prove  a  fact,  but  as  the  person 
who  transacted  that  fact. 


1  Revised  Statutes.  Section  4920.  1869. 

*  Silsby  v.  Foote,  14  Howard,  218,  4  Planing-Machine  Co.   v.  Keith, 

1852.  101  U.  S.  492,  1879;  Many  v.  Jagger, 

z  Wise  v.  Allis,  9  Wallace,   737,  1  Blatch.  376,  1848. 


348  ACTIONS  AT  LAW.  [CHAP.  XVIII. 

Notices  need  not  state  the  particular  time  when  an  anti- 
cipating printed  publication  was  published,  nor  when  an 
anticipating  process  or  thing  was  known  or  used  ; '  but  they 
must  state  the  dates  of  all  alleged  anticipating  patents.3  If 
a  notice  does  unnecessarily  state  a  particular  time,  that 
statement  will  be  regarded  as  harmless  surplusage,  and  a 
variance  therefrom  in  the  evidence,  will  not  render  the  latter 
inadmissible.3 

§  445.  Where  any  defence  to  a  patent  action  can  be  based 
upon  a  fact  of  which  the  court  will  take  judicial  notice  with- 
out evidence,  that  defence  may  be  made  under  the  general 
issue  without  any  special  pleading.  This  point  has  perhaps 
never  been  adjudicated  in  an  action  at  law,  but  the  principle 
upon  which  it  rests  is  fully  established  in  actions  in  equity,4 
and  there  is  probably  no  reason  to  doubt  that  it  will  also 
be  enforced  on  the  law  side  of  the  Federal  courts.  In  the 
case  last  cited,  Justice  WOODS,  in  delivering  the  opinion  of 
the  Supreme  Court,  made  the  following  remark  :  "  Every 
suitor  in  a  cause  founded  on  letters  patent  should,  there- 
fore, understand  that  the  question  whether  his  invention  is 
patentable  or  not  is  always  open  to  the  consideration  of  the 
court,  whether  the  point  is  raised  by  the  answer  or  not." 
Now  it  has  been  shown  that  in  order  to  be  "  patentable  "  a 
process  or  thing  must  have  four  characteristics.  It  must  be 
a  statutory  subject  of  a  patent.  It  must  be  an  invention. 
It  must  be  novel.  It  must  be  useful.5  But  Justice  WOODS 
used  the  word  "  patentable  "  in  the  first  and  second  of  these 
senses  only.  'It  was  long  ago  settled  that  special  pleading, 
or  a  statutory  notice,  is  necessary  to  the  defence  of  want  of 
novelty,6  and  alleged  want  of  utility  is  so  plainly  a  question 
of  fact,  depending  upon  evidence,  that  plaintiffs  ought  not 
to  be  liable  to  be  surprised  with  that  defence,  on  the  trial 

1  Phillips®.  Page,  24  Howard,  164,  1875;  Slawson  v.  Kailroad  Co.  107 
1860.  U.  S.  649, 1882. 

2  Revised  Statutes,  Section  4920.  8  Chapters  I.  to  IV.  of  this  book. 

3  Phillips®.  Page,  24  Howard,  164,  6  Agawam  Co.  v.  Jordan,  7  Wal- 
1860.  lace,  583,  1868. 

4  Brown  v.   Piper,   91  U.  S.   37, 


CHAP.   XVIII.]  ACTIONS   AT   LAW.  349 

of  an  action  at  law.  But  Justice  WOODS'  remark,  even  when 
thus  limited,  requires  also  to  be  read  in  the  light  of  the  case 
then  at  bar.  In  that  case  the  patents  were  held  void  for 
want  of  invention.  To  find  them  so,  the  court  had  only  to 
take  judicial  notice  that  windows  had  theretofore  been 
placed  in  opposite  walls  of  rooms,  and  that  rays  of  light 
had  theretofore  been  reflected  through  apertures. 

§  446.  The  first  and  second  defences  are  those  which  come 
within  the  doctrines  of  the  last  section  relevant  to  judicial 
notice.  The  first  defence  is  applicable  only  when  a  "  prin- 
ciple "  has  been  patented,  as  for  example  by  the  eighth 
claim  of  Morse,1  or  by  the  anaesthesia  patent  of  Morton  and 
Jackson.2  The  applicability  of  those  doctrines  to  that  de- 
fence is  perhaps  invariable.  But  where  a  patent  is  assailed 
for  want  of  invention  on  account  of  prior  facts  which  must 
be  proved  by  evidence  in  order  to  be  acted  upon  by  courts, 
there  appears  to  be  no  warrant  for  saying  that  the  second 
defence  need  not  be  pleaded.  Justice  requires  that  the 
plaintiff  be  notified  beforehand  of  such  a  defence,  as  truly 
as  of  the  defence  of  want  of  novelty ;  for  it  may  equally  be 
based  on  facts  outside  of  the  patent,  and  outside  of  the 
knowledge  of  the  inventor  and  of  the  plaintiff. 

§  447.  The  third  defence  may  be  based  upon  a  special 
plea,  instead  of  on  the  general  issue  accompanied  by  notice, 
and  when  that  practice  is  adopted,  that  plea  is  the  only 
notice  which  the  plaintiff  can  claim.3  Federal  courts  of 
equity,  without  any  statute  prescribing  that  course,  have 
always  followed  the  law  relevant  to  notices  of  want  of  nov- 
elty ;  and  have  uniformly  rejected  evidence  on  that  point, 
unless  the  defendant,  in  his  answer,  gave  the  plaintiff  the 
same  kind  and  degree  of  information  thereof,  that  the  statute 
calls  upon  a  defendant,  who  pleads  the  general  issue  at  law, 
to  give  in  his  notice.4  Courts  of  law  will  probably  follow 


1  O'Reilly  «.  Morse,  15  Howard,  8  Evans  v.  Eaton,  3  Wheaton,  504, 

112,  1853.  1818. 

4  Morton  v.  Infirmary,  5  Blatch.  4  Agawara  Co.  v.  Jordan,  7  Wai- 

116,  1862.  lace,  583,  1868. 


350  ACTIONS   AT   LAW.  [CHAP.  XVIII. 

this  salutary  example,  and  will  call  upon  defendants  who 
elect  to  plead  specially,  to  make  their  special  pleas  as  full 
in  this  respect,  as  the  statute  requires  notices  to  be  when 
the  general  issue  is  adopted.  So  also,  it  has  been  held  that 
special  pleas,  when  used  instead  of  notices,  must  be  filed  at 
least  thirty  days  before  the  term  of  trial,  or  the  plaintiff 
will  be  entitled  to  a  continuance.1  This  holding  was  so 
reasonable  that  it  can  be  supported  on  the  ground  that 
every  court  has  power  to  make  reasonable  rules  to  regulate 
the  time  of  filing  pleas.8  A  special  plea  which  has  been 
stricken  out  by  order  of  court,  cannot  operate  as  a  notice 
and  thus  furnish  the  foundation  of  a  defence  which  requires 
a  notice  in  the  absence  of  a  special  plea.3 

§  448.  The  fourth  defence  is  not  among  those  which  can 
be  made  under  the  general  issue  accompanied  by  notice. 
There  is  probably  no  case  in  which  it  has  been  successfully 
made  in  equity,  without  being  set  up  in  the  answer  ;  or  at  law, 
without  being  set  up  in  a  special  plea.  In  the  absence  of 
such  precedents,  it  would  be  unsafe  for  a  pleader  to  attempt 
such  an  innovation  on  the  rules  of  the  common  law. 

§  449.  The  fifth  and  sixth  defences  always  require  evidence 
outside  of  the  patent,  and  outside  of  the  doctrines  of  judicial 
notice.  They  may  be  made  under  the  general  issue  accom- 
panied by  the  statutory  notice,4  or  under  a  special  plea,  but 
there  is  no  reason  to  suppose  that  they  can  lawfully  be 
made  under  the  general  issue  alone. 

§  450.  The  seventh  defence  is  not  based  on  any  express 
statute.  Its  foundation  is  the  general  spirit  of  the  patent 
laws,  re-enforced  by  the  dicta  of  the  Supreme  Court  in  the 
case  of  Railway  Co.  v.  Sayles.5  Evidence  to  support  it  must 
always  be  drawn  from  outside  of  the  patent,  and  must  be 
regularly  introduced  into  the  case.  This  defence  is  there- 


1  Phillips  v.  Comstock,  4  McLean,  1849. 

525,  1849.  4  Revised  Statutes,  Section  4920. 

2  Packet  Co.  c.  Sickles,  19  Wai-  5  Railway  Co.  v.  Sayles,  97  U.  S. 
lace,  611,  1873.  563,  1878. 

3Foote  v.  Silsby,  1  Blatch.  445, 


CHAP.  XVIII.]  ACTIONS  AT   LAW.  351 

fore  to  be  made  by  a  special  plea,  when  it  is  made  at  all. 
But  its  applicability  will  always  be  very  infrequent. 

§  451.  The  eighth  defence  may  be  made  either  by  the  gen- 
eral issue  accompanied  by  notice,1  or  by  a  special  plea.  It 
applies  to  cases  where  another  than  the  patentee  preceded 
him  in  the  first  conception  of  the  patented  thing,  but  did 
not  precede  him  in  adapting  it  to  actual  use.  If  that  other 
stopped  with  that  conception,  the  validity  of  the  patent  is 
not  affected  thereby,  but  if  he  used  reasonable  diligence  in 
adapting  and  perfecting  the  invention  so  conceived,  no  sub- 
sequent inventor  can  have  a  valid  patent,  surreptitiously  or 
unjustly  obtained  by  him  for  the  same  invention.  Such  a 
patent  is  surreptitiously  obtained,  where  the  patentee  ap- 
propriates the  idea  from  the  first  conceiver,  and,  exceeding 
him  in  speed,  reduces  the  invention  to  proper  form,  and 
secures  the  patent,  while  the  first  conceiver  is  diligently 
laboring  to  adapt  the  invention  to  use.  Such  a  patent  is 
unjustly  obtained,  if  it  is  issued  to  a  subsequent  inventor, 
without  notice  to  the  first  conceiver,  when  a  caveat  of  the 
first  conceiver  is  on  file  in  the  Patent  Office.4  Where  this 
defence  is  pleaded,  all  its  elements  must  be  incorporated  in 
the  plea.  The  allegation  of  unjust  or  surreptitious  obtain- 
ing of  the  patent,  must  be  accompanied  by  an  allegation 
that  the  first  conceiver  was  at  the  time  using  reasonable 
diligence  in  adapting  and  perfecting  the  invention.1 

§  452.  The  ninth  and  tenth  defences  are  based  on  the  fact 
that  patents  can  lawfully  be  granted  to  no  one  but  the  in- 
ventors of  the  things  covered  thereby,  or  to  those  who  rep- 
resent them  as  assigns  or  legal  representatives.4  Neither 
of  those  defences  can  ever  receive  any  support  from  the  face 
of  the  patent,  or  from  any  fact  of  which  any  court  can  take 
judicial  notice.  Both  depend  upon  evidence  cdiunde,  and 
either  must  be  interposed  in  a  special  plea,  for  the  statute 


1  Revised  Statutes,  Section  4920.  3  Agawam  Co.  v.  Jordan,  7  Wal- 

*  Phelps  v.  Brown,  4  Blatch.  362,      lace,  .r)83,  1868. 
1859.  *  Sections  50  and  51  of  this  book. 


352  ACTIONS   AT   LAW.  [CHAP.  XVIII. 

does  not  include  either  among  those  defences  which  may  be 
made  under  the  general  issue  accompanied  by  notice.1 

§  453.  The  eleventh  defence  may  be  set  up  under  the  gen- 
eral issue  accompanied  by  notice,2  or  in  a  special  plea.  It 
is  a  defence  which  is  oftener  put  in  by  pleaders  who  are  at 
a  loss  how  to  defend,  than  it  is  by  those  who  assail  patents 
intelligently.  It  has  seldom  or  never  been  made  with  suc- 
cess, because  patents  are  seldom  or  never  obnoxious  to  the 
objection  which  it  involves.  Even  where  a  patent  does 
contain  too  much  or  too  little,  this  defence  does  not  apply, 
unless  the  fault  was  intended,  and  was  intended  to  deceive 
the  public.3 

§  454.  The  twelfth  defence  is  somewhat  similar  to  the  first 
member  of  the  eleventh  ;  but  unlike  that,  it  cannot  be  based 
on  the  general  issue  accompanied  by  notice  ;  and  it  does  not 
require  the  element  of  intention  to  deceive.  It  is  based 
upon  that  provision  of  the  statute  which  makes  a  full,  clear, 
concise,  and  exact  description  of  the  invention  a  prerequisite 
to  the  jurisdiction  of  the  Commissioner  to  grant  a  patent.4 
If  a  patent  falls  below  the  statutory  requirement  in  that 
respect,  that  patent  is  void.5  "Whether  a  given  patent  does 
so  fall,  is  a  question  of  evidence  and  not  of  construction.' 
This  defence  must  be  interposed  in  a  special  plea ;  for 
neither  the  statute  nor  any  precedent  contemplates  its  be- 
ing based  on  the  general  issue,  either  with  or  without 
notice ;  and  still  less  does  any  rule  of  law  provide  for  its 
being  made  on  the  trial  of  an  action  without  being  pleaded 
at  all. 

§  455.  The  thirteenth  defence  is  based  on  the  statute 
which  requires,  that  before  any  inventor  shall  receive  a 
patent  for  his  invention,  he  shall  particularly  point  out,  and 
distinctly  claim,  the  part,  improvement,  or  combination 


1  Butler  v.   Bainbridge,   29  Fed.          4  Revised  Statutes,  Section  4888. 
Rep.  143,  1886.  5  O'Reilly  v.  Morse,  15  Howard, 

4  Revised  Statutes,  Section  4920.  62,  1853. 

3  Hotchkiss  ».  Oliver,  5  Denio  (N.          6  Loom  Co.  «.  Higgins,  105  U.  S. 

Y.),  314,  1848.  580,  1881. 


CHAP.   XVIII.]  ACTIONS   AT   LAW.  353 

which  he  claims  as  his  invention.1  It  is  a  defence  of  decided 
merit,  aimed  by  the  policy  of  the  law  at  nebulous  claims. 
The  courts  have  not  heretofore  gone  quite  so  far  in  uphold- 
ing this  defence,  as  the  statute  would  perhaps  justify. 
Probably  the  strongest  judicial  language  heretofore  used  on 
the  subject,  is  that  of  the  Supreme  Court  in  the  case  of 
Carlton  v.  Bokee.2  In  that  case,  Justice  BBADLEY,  in  de- 
livering the  opinion,  said  that :  "  Where  a  specification  by 
ambiguity  and  a  needless  multiplication  of  nebulous  claims, 
is  calculated  to  deceive  and  mislead  the  public,  the  patent 
is  void."  A  special  plea  is  also  the  best  and  safest  means 
of  interposing  this  defence  ;  though  there  is  less  meritorious 
necessity  for  special  pleading  in  support  of  it,  than  in  sup- 
port of  any  other  defence  which  assails  the  validity  of  a 
patent.  The  question  of  such  validity,  as  against  this 
defence,  is  a  question  of  construction  of  the  document,  to 
decide  which,  a  judge  will  seldom  require  aid  from  outside 
the  letters  patent  themselves. 

§  456.  The  fourteenth  defence  is  based  upon  the  statute 
which  provides  that  where  a  new  invention  and  an  old  one 
are  both  claimed  in  a  patent,  the  patentee  may  sustain  an 
action  on  the  former,  but  not  unless  he  disclaims  the  latter 
without  unreasonable  delay.3  That  the  old  invention  was 
old,  and  that  the  delay  to  disclaim  it  was  unreasonable,  are 
matters  of  fact  depending  upon  evidence.  There  is  there- 
fore no  reason  to  suppose  that  this  defence  can  be  made  in 
any  action  at  law,  without  a  special  plea  to  give  it  entrance. 

§  457.  The  fifteenth  defence  goes  to  the  jurisdiction  of 
the  Commissioner  to  reissue  the  patent  in  suit.  In  the 
chapter  on  reissues,  the  defence  is  discussed  with  some  ful- 
ness." Whatever  doubt  may  exist  relevant  to  its  validity, 
it  is  clear  that  the  questions  which  are  involved  in  its  ap- 
plicability to  a  particular  case,  are  mainly  questions  of  fact, 
depending  upon  evidence  in  pais,  and  that  a  special  plea  is 


1  Revised  Statutes,  Section  4888.  8  Revised  Statutes,  Section  4922. 

2  Carlton  v.   Bokee,  17  Wallace,          4  Sections  221  to  225  of  this  book. 
472,  1873. 


354  ACTIONS   AT   LAW.  [CHAP.  XVIII. 

therefore  the  proper  means  of  bringing  it  to  the  attention 
of  the  court. 

§  458.  The  sixteenth  defence  originated  in  the  year  1882, 
and  though  not  based  on  the  letter  of  any  statute,  it  has 
been  many  times  enforced.  The  first  element  in  its  founda- 
tion is  a  point  of  comparative  construction  of  the  original 
and  the  reissue  patent.  But  inasmuch  as  a  plaintiff,  suing 
on  a  reissue,  need  not  introduce  the  original  in  evidence, 
even  that  element  depends  upon  proof  by  the  defendant  of 
the  contents  of  the  original.  The  second  element  is  a  vari- 
able quantity,  for  the  particular  length  of  time,  between  the 
date  of  an  original  and  the  application  for  a  reissue  patent, 
which  will  be  fatal  to  a  broadened  reissue,  depends  upon 
the  circumstances  of  each  case,  and  those  circumstances  can 
be  made  known  to  the  court  through  evidence  alone.  These 
considerations  point  to  the  propriety  of  Disregarding  this 
defence,  in  an  action  at  law,  unless  it  is  set  up  in  a  special 
plea,  and  the  plaintiff  thus  notified  of  what  he  must  meet 
on  the  trial. 

§  459.  The  seventeenth  defence  depends  upon  proof  of 
the  original  patent,  and  requires  at  least  that  amount  of 
evidence  to  support  it.  In  cases  where  the  question  of 
sameness  or  difference  of  invention  is  a  complicated  one, 
courts  may  require  the  benefit  of  evidence  on  that  subject 
to  aid  them  in  deciding  the  point.  In  order  to  give  both 
sides  an  opportunity  to  produce  such  evidence,  a  special 
plea  is  necessary  to  be  insisted  upon. 

§  460.  The  eighteenth  defence  has  seldom  been  made,  and 
has  never  been  made  successfully  in  any  reported  case.  It 
will  probably  never  again  be  applicable  to  any  extension, 
for  extensions  capable  of  being  sued  upon  are  rapidly 
diminishing  in  number.  If  an  occasion  should  arise  for  its 
interposition,  it  ought  to  be  set  up  in  a  special  plea,  for  it 
depends  upon  a  point  of  fact,  and  one  upon  which  evidence 
outside  of  the  patent  is  likely  to  be  required. 

§  461.  The  nineteenth  defence  will  of  course  require  evi- 

1  Miller  «.    Brass  Co.   104  U.  S.  350,  1882. 


CHAP    XVIII.]  ACTIONS  AT  LAW.  355 

dence  of  the  record  of  the  court  which  repealed  the  patent. 
But  as  that  record  cannot  be  contradicted  by  any  evidence, 
and  as  no  repeal  could  have  been  had  without  the  knowl- 
edge of  the  plaintiff  or  his  privies,  there  seems  to  be  no 
meritorious  reason  why  a  special  plea  should  be  insisted 
upon  to  sustain  this  defence.  But  in  the  absence  of  a 
precedent,  that  will  be  the  safest  pleading  for  the  defendant 
to  file. 

§  462.  The  twentieth  defence  demands  a  special  plea,  be- 
cause the  evidence  to  prove  it  must  come  from  outside  of 
the  patent,  and  when  produced  it  miist  generally  be  sup- 
ported by  expert  testimony  that  the  foreign  patent  pro- 
duced is  really  one  for  the  same  invention  as  the  United 
States  patent  in  suit.  Indeed  the  defence  may  fail  even  then, 
for  it  cannot  stand  against  proof  that  the  foreign  patent  was 
surreptitiously  taken  out  by  another  than  the  United  States 
patentee,  and  without  his  knowledge  or  consent.  It  would 
be  highly  unjust  to  allow  a  plaintiff  to  be  surprised  on  the 
trial  of  an  action  at  law,  with  proof  of  a  foreign  patent  for 
his  invention  granted  to  another,  after  his  invention  was 
made,  but  before  the  date  of  his  patent.  Such  a  piece  of 
evidence,  if  unexplained,  would  limit  the  duration  of  the 
United  States  patent,  and  thus  perhaps  defeat  the  suit.1 
But  if  the  plaintiff  could  have  time  to  prove  that  it  was 
granted  without  the  knowledge  or  consent  of  the  inventor 
or  patentee,  it  would  have  no  unfavorable  effect  upon  his 
rights.  It  is  clear,  therefore,  that  no  such  issue  ought 
to  be  sprung  upon  a  plaintiff  when  before  the  court.  A* 
special  plea  is  requisite  to  give  him  notice  of  a  fact  appar- 
ently so  unfavorable,  but  which  may  really  be  harmless 
when  explained. 

§  463.  The  twenty-first  defence  is  prima  facie  made  out, 
by  proof  that  the  plaintiff  made  or  sold  specimens  of  his  in- 
vention without  marking  them  "  patented."  But  it  can  be 
partly  overthrown  by  proof  that  the  defendant  continued 
to  infringe,  after  he  was  duly  notified  of  the  patent  and  of 

1  Revised  Statutes,  Section  4887. 


356  ACTIONS  AT  LAW.  [CHAP.  XVIII. 

his  infringement.1  It  is  therefore  certain  that  the  prima 
facie  evidence  ought  not  to  be  admitted  without  a  special 
plea,  because  if  it  were,  a  verdict  might  be  based  on  only 
half  of  the  truth,  even  where  the  other  half  would  have  led 
to  a  contrary  conclusion  if  the  plaintiff  had  been  notified 
of  the  necessity  of  producing  the  evidence  to  prove  it.2 

§  464.  The  twenty-second  defence  can  be  made  under 
the  general  issue,  where  the  defendant  merely  proposes  to 
argue  that  the  plaintiff's  evidence  does  not  make  out  any 
title,  or  makes  out  no  such  title  as  enables  him  to  sue  in  an 
action  at  law.  But  where  the  defendant  attacks  the  plain- 
tiff's title  on  the  basis  of  a  paramount  assignment  to  another, 
he  ought  to  plead  the  defence  specially,  for  otherwise  the 
plaintiff  might  be  surprised  on  the  trial  with  evidence  which, 
with  a  little  time  for  preparation,  he  could  perhaps  explain 
away,  or  perhaps  overthrow. 

§  465.  The  twenty-third  and  twenty-fourth  defences  both 
required  to  be  pleaded  specially  according  to  the  pleading 
rules  of  the  ancient  common  law.3  But  under  the  relaxa- 
tion which  obtained  in  England,  late  in  the  last  century, 
they  could,  in  ordinary  cases,  have  been  proved  under  the 
general  issue.4  That  relaxation  does  not,  however,  deserve 
to  be  extended  by  any  process  of  reasoning  by  analogy ; 
and  it  is  possible  that  the  courts  will  hold  that  it  does  not 
apply  to  patent  litigation  in  the  United  States. 

§  4*66.  The  twenty-fifth  defence  is  one  to  which  the  plea 
of  the  general  issue  is,  and  always  was,  appropriate,  for  it 
is  a  defence  which  consists  simply  in  a  denial  of  the  alleged 
infringement.6  And  even  where  a  proper  defence  of  non- 
infringement  involves  evidence  of  the  state  of  the  art,  the 
general  issue  is  a  sufficient  plea  under  which  to  make  such 
a  defence,  because  no  notice  to  the  plaintiff  is  necessary  to 
render  such  evidence  admissible.6 


1  Revised  Statutes,  Section  4900.  4  1  Chitty  on  Pleading,  491. 

2  Rubber  Co.  ®.  Goodyear,  9  Wai-  6  Stephen  on  Pleading.  160. 
lace,  801,  1869.  •  Dunbar  «.  Myers,  94  U  S.  198, 

8  Stephen  on  Pleading,  158.  1876;  Eachus  v.  Broonaall,  115  U.  S. 


CHAP.  XVIII.]  ACTIONS  AT  LAW.  357 

§  467.  The  twenty-sixth  defence  is  as  proper  in  an  action 
at  law  as  it  is  in  an  action  in  equity.1  Estoppels  in  patent 
cases  are  like  those  in  other  cases,  in  that  they  are  divisible 
into  three  classes  :  Estoppels  by  matter  of  record  ;  by  mat- 
ter of  deed  ;  and  by  matter  in  pais.  The  principles  of  estop- 
pel constitute  a  systematic  department  of  the  law,  to  the 
delineation  and  development  of  which  a  number  of  text- 
writers  have  devoted  careful  and  thorough  consideration. 
No  extensive  discussion  of  the  subject  is  therefore  to  be 
expected  in  this  book.  Something  has  already  been  written 
about  estoppel  in  pais,  in  connection  with  the  subject  of 
implied  licenses.2  Something  more  may  be  added  in  this 
place,  about  estoppels  by  matter  of  record,  and  by  matter 
of  deed,  for  the  patent  precedents  contain  a  few  cases  in 
which  those  doctrines  have  been  applied  to  controversies 
touching  letters  patent  for  inventions.  But  the  investigator 
will  often  need  to  resort  to  the  standard  text-books  on 
estoppel,  when  seeking  for  the  law  applicable  to  such  mat- 
ters, as  they  may  hereafter  arise  in  patent  litigation ;  for 
the  instances  in  which  the  doctrines  of  estoppel  have  here- 
tofore been  applied  to  patent  cases  are  comparatively  few. 
Those  doctrines  may,  however,  be  deduced  from  other  kinds 
of  causes,  and  then  applied  in  patent  litigation  with  all  their 
inherent  force.3 

§  468.  Estoppel  by  matter  of  record  arises  out  of  the  doc- 
trine of  res  judicata  ;  and  indeed  that  sort  of  estoppel  gen- 
erally and  properly  passes  under  the  name  of  that  doctrine. 
It  is  a  requirement  of  public  policy  and  of  private  peace, 
that  each  particular  litigation  shall  duly  come  to  an  end, 
and  that  when  once  ended,  it  shall  not  be  revived.  The  law 
therefore  properly  requires  that  things  adjudicated,  shall 
not  again  be  drawn  in  question  between  the  same  parties, 
or  between  any  persons  whose  connection  with  the  adjudica- 


434,  1885;  Grier  «.  Wilt,  120  U.  S.  ton,  16  Fed.  Rep.  477,  1883. 

429,  1886.  *  Section  313  of  this  book. 

1  Dickerson  v.  Colgrove,  100  U.  S.  3  Duboise  v.  Railroad  Co.  5  Fisher, 

584,  1879 ;  City  of  Concord  t>.  Nor-  208,  1871. 


358  ACTIONS  AT   LAW.  [CHAP.  XVIII, 

tion  is  such  that  they  ought  not  to  be  permitted  to  gainsay 
its  result.  But  things  are  not  adjudicated  in  this  sense 
till  they  are  adjudicated  finally.  Interlocutory  decrees, 
therefore,  furnish  no  foundation  for  a  plea  of  res  judicata.1 
A.  final  decree  is  pleadable,  in  a  subsequent  action,  notwith- 
standing the  defendant  may  have  new  defences  to  inter- 
pose :  defences,  which  he  did  not  deem  it  necessary  to  make 
to  the  former  suit,  or  did  not  learn  of  in  time  to  set  them 
up  in  the  former  litigation.8  And  final  decrees  or  judg- 
ments are  not  only  binding  on  the  parties  to  the  actions 
from  which  they  resulted,  but  they  are  also  binding  upon 
all  persons  who  purchase  interests  in  the  subject-matter  of 
litigation  after  such  decrees  or  judgments  are  entered  ;  * 
and  upon  all  persons  who  assumed  the  control  and  expense 
of  the  former  litigation,  even  though  not  parties  thereto.4 
So  also,  judgments  by  default,  decrees  pro  confesso  and  con- 
sent decrees  are  pleadable  as  res  judicata,  if  they  are  final 
in  their  nature,  with  the  same  effect  as  are  judgments  or 
decrees  which  were  rendered  after  a  long-contested  litiga- 
tion.6 But  in  order  to  be  binding  on  either  party  to  a  new 
action,  a  former  judgment  or  decree  must  be  binding  on 
both.  No  former  adjudication  is  pleadable  in  favor  of  either 
party  to  a  suit  unless  it  would  have  been  pleadable  against 
him,  if  it  had  been  rendered  the  other  way.8  But  a  decree 
may  be  pleadable  against  a  complainant,  only  on  a  single 
point  in  a  subsequent  case,  though  it  would  have  been 


1  Rumford    Chemical    Works  v.  Asbestos  Felting  Co.  4  Fed.  Rep. 

Hecker,  2  Bann.  &  Ard.  359,  1876  ;  816, 1880;  American  Bell  Telephone 

Roemer  v.  Neumann,  26  Fed.  Rep.  Co.  v.  National  Telephone  Co.   27 

332,  1886;  Morss  v.  Knapp,  37  Fed.  Fed.  Rep.  665, 1886. 

Rep.  353,  1889.  >  Bradford  t>.  Bradford,  5  Connec- 

*  Duboise  v.  Railroad  Co.  5  Fisher,  ticut,  181, 1823;  Davis  v.  Murphy.  2 

210,  1871;  Gloucester  Isinglass  Co.  Rich.   (S.    C.)    560,   1846;    United 

».  LePage,  30  Fed.  Rep.  371,  1887.  States  Packing  Co.  v.  Tripp,  31  Fed. 

8  Consolidated  Fruit    Jar  Co.  «.  Rep.  350,  1887. 

Whitney,  2  Bann.  &  Ard.  33,  1875 ;  « Ingersoll  v.  Jevvett,  16  Blatch. 

Pennington  v.  Hunt,  20  Fed.  Rep.  378,    1879 ;    Dale    v.    Rosevelt,     1 

195,  1884.  Paige  (N.  Y.),  35.  1828;  Paynes  v. 

4  United    States    Felting    Co.    v.  Coles,  1  Munford  (Va.),  394,  1810. 


CHAP.  XVIII.  J  ACTIONS   AT   LAW.  359 

pleadable  against  the  defendant  on  all  the  points  in  that 
case,  if  it  had  been  rendered  the  other  way  ;  because  to  be 
rendered  the  other  way,  all  those  points  would  have  to  be 
decided  for  the  complainant,  whereas  only  one  of  those 
points  might  have  to  be  decided  against  the  complainant, 
in  order  to  necessitate  a  decree  for  the  defendant.1 

§  469.  Estoppel  by  matter  of  deed  may  also  arise  in  pat- 
ent affairs.  Where,  for  example,  an  assignor  or  grantor  of 
a  patent  right,  afterward  infringes  the  right  which  he  con- 
veyed, he  is  estopped,  by  his  conveyance,  from  denying  the 
validity  of  the  patent,  when  sued  for  its  infringement,"  even 
where  the  invalidity  is  due  to  an  unlawful  reissue  obtained 
after  the  assignment.3 

§  470.  The  defence  of  estoppel  requires  a  special  plea  to 
introduce  it  into  a  litigation.  Thus,  for  example,  if  a 
former  judgment  or  decree  is  not  pleaded  as  an  estoppel 
by  a  defendant,  he  refers  the  merits  of  the  controversy 
anew  to  the  court.  The  former  adjudication  may  be  used 
as  an  argument,  but  it  cannot  be  relied  upon  as  a  bar,  un- 
less it  is  set  up  in  a  special  plea.4 

§  471.  The  twenty-seventh  defence  must  always  be  spec- 
ially pleaded  by  the  defendant,  or  it  will  be  disregarded  by 
the  court.5  No  defendant  can  avail  himself  of  any  statute 
of  limitation,  upon  the  general  issue.'  In  the  matter  of 
pleading  this  defence,  there  is  therefore  no  mystery  and  no 
doubt.  But  when  the  pleader  looks  for  a  particular  statute 
of  limitation  to  set  up  in  a  particular  case,  he  is  likely  to 
encounter  some  of  the  most  complex  and  difficult  questions 
he  ever  met.  An  explanation  of  the  subject  may  therefore 
properly  be  inserted  in  this  place. 

§  472.  Section  55  of  the  Patent  Act  of  1870  related  to 
remedies  for  infringements  of  patents,  and  its  final  clause 


1  Steam  Gauge  &  Lantern  Co.  v.  919,  1887. 
Meyrose,  27  Fed.  Rep  213,  1886.  4  1  Chitty  on  Pleading.  509. 

1  Consolidated  Middlings  Purifier          5  1  Chitty  on  Pleading,  498. 
Co.®.  Guilder, 9 Fed.  Rep.  156,1881.          «  Neale    v.    Walker,    1    Cranch'a 

3  Burdsall  v,  Curran,  31  Fed.  Rep.  Circuit  Court  Reports,  57,  1802. 


360  ACTIONS  AT  LAW.  [CHAP.  XVIII. 

provided  that :  "  All  actions  shall  be  brought  during  the 
term  for  which  the  letters  patent  shall  be  granted  or  ex- 
tended, or  within  six  years  after  the  expiration  thereof."1 
That  enactment  continued  to  be  in  full  force  until  the  pass- 
age of  the  Revised  Statutes,  June  22,  1874.  It  was,  how- 
ever, omitted  from  that  compilation,  and  by  operation  of 
Section  5596,  was  thereby  repealed  as  to  all  rights  of  action 
thereafter  to  accrue  ;  but  by  virtue  of  Section  5599  it  was 
left  in  full  force  as  to  all  rights  of  action  in  existence  at  the 
date  of  the  repeal.2  No  further  national  legislation  has 
been  had  relevant  to  the  subject,  up  to  the  time  of  the  pub- 
lication of  this  book.  This  national  statute  of  limitation 
has  no  application  to  any  infringement  committed  since 
June  22,  1874.  It  applies  fully  to  all  infringements  com- 
mitted between  that  day  and  July  8,  1870,  the  day  whereon 
it  was  enacted.  To  what  extent  it  applies  to  infringements 
committed  before  the  latter  date  is  an  intricate  question. 
It  is  convenient  first  to  examine  that  point ;  and  having  as- 
certained it  as  well  as  may  be,  to  inquire  what  is  the  true 
construction  of  the  statute  as  to  those  rights  of  action  to 
which  it  is  found  to  apply. 

§  473.  Bights  of  action  based  on  infringements  of  patents 
which  expired  more  than  six  years  before  July  8,  1870, 
would,  according  to  the  terms  of  the  statute  of  that  date,  be 
barred  the  moment  of  its  approval  by  the  President.  Now 
while  the  legislative  power  has  constitutional  authority  to 
make  a  statute  of  limitation  retroactive  to  the  extent  of 
making  it  apply  to  rights  of  action  already  accrued,  it  has 
no  authority  to  make  such  a  statute  retroactive  to  the  ex- 
tent of  making  it  cut  off  a  right  of  action  the  moment  of  its 
passage.  To  do  the  latter  thing,  would  be  to  deprive  per- 
sons of  property  without  due  process  of  law,  and  would 
therefore  be  unconstitutional.3  Where  a  statute  of  limita- 


1  16  Statutes  at  Large,  Ch.  230,  1886;  May  v.  County  of  Logan,  30 

Sec.  55,  p.  206.  Fed.  Rep.  256,  1887. 

s  Hayden    v.    Oriental    Mills,    22  3  Fifth  Amendment  to  the  Consti- 

Fed.  Rep.  103, 1884;  May  v.  County  tution  of  the  United  States, 
of    Buchanan,   29    Fed.   Rep.   470, 


CHAP.  XVIII.]  ACTIONS  AT  LAW.  361 

tion,  if  literally  construed,  would  have  that  effect,  the 
courts  will  avoid  that  result  by  construction.  Some  courts 
have,  with  this  purpose,  held  that  such  a  statute  does  not 
apply  at  all  to  rights  of  action  old  enough  to  be  fully 
barred  by  it  at  the  time  of  its  passage.  Others  have  held 
that  such  rights  of  action  may  be  sued  on  after  the  passage 
of  such  a  statute,  if  the  actions  are  brought  within  a  reason- 
able time  after  its  passage.  The  Supreme  Court  of  the 
United  States  has  decided  that  such  rights  of  action  may 
be  sued  upon  within  the  same  length  of  time  after  the  pass- 
age of  such  a  statute,  as  that  within  which  the  statute 
provides  that  subsequently  accruing  rights  of  action  must 
be  sued  upon  after  they  accrue.1  It  is  certain,  therefore, 
that  all  rights  of  action  for  infringements  of  patents  which 
expired  before  July  8, 1864,  are  now  barred  by  the  national 
statute  of  limitation,  unless  actions  were  begun  to  enforce 
them  as  early  as  July  8,  1876.  The  same  considerations 
apply  with  equal  force  to  patents  which  expired  between 
July  8,  1864,  and  July  8,  1870 ;  and  all  rights  of  action 
based  on  infringements  of  those  patents  are  also  barred,  un- 
less actions  were  brought  to  enforce  them  within  six  years 
after  the  last  mentioned  day. 

§  474.  Infringements  committed  before  July  8,  1870,  of 
patents  which  did  not  expire  till  after  that  time,  are  doubt- 
less subject  to  the  operation  of  the  national  statute  in  pre- 
cisely the  same  way  as  are  infringements  committed  while 
that  statute  was  in  full  force,  to  wit,  between  July  8,  1870, 
and  June  22,  1874.  The  owners  of  rights  of  action  arising 
out  of  either  of  these  classes  of  infringement,  had  at  least 
six  years  in  which  to  begin  actions  for  their  enforcement ; 
and  it  is  therefore  clear  that  the  courts  will  do  nothing  by 
way  of  construction  to  relieve  them  from  the  literal  opera- 
tion of  the  statute. 

§  475.  The  application  to  unextended  patents  of  the 
points  of  law  which  are  explained  in  the  last  two  sections, 
is  somewhat  complicated ;  but  when  those  points  require  to 

1  Sohn  r.  Waterson,  17  Wallace,  596,  1873. 


362  ACTIONS   AT    LAW.  [CHAP.  XVIII. 

be  applied  to  extended  patents,  an  additional  complexity 
arises.  Does  the  national  statute  of  limitation  treat  the 
first  fourteen  years  of  a  patent  separately  from  the  last 
seven  years,  or  does  it  treat  both  spaces  of  time  as  one 
term  of  twenty-one  years  ?  This  inquiry  is  immaterial  to 
the  welfare  of  rights  of  action  under  the  extended  term  of 
a  patent ;  but  it  may  be  vital  to  those  which  arose  under 
an  original  term.  If  the  statute  means,  that  actions  based 
on  an  original  term  must  be  brought  within  six  years  after 
the  expiration  of  that  term,  they  are  barred  seven  years 
sooner  than  they  are  if  the  statute  means  that  all  actions 
under  a  particular  patent,  may  be  brought  during  any  part 
of  the  life  of  that  patent,  or  within  six  years  after  its  final 
expiration.  Whether  the  statute  has  the  one  or  the  other 
of  these  meanings,  is  an  unsettled  question.  The  best  of 
the  arguments  in  favor  of  the  first  view  are  contained  in  a 
decision  of  Judge  BARE  ; l  and  some  of  those  supporting 
the  second  view  are  to  be  found  in  an  opinion  of  Judge 
HUGHES."  The  only  other  decisions  of  the  point  which  are 
contained  in  the  reports,  are  those  of  Justice  HARLAN,"  and 
of  Judges  DILLON  and  LOVE/  and  of  Judge  COLT.S  All  of 
these  jurists  held  the  first  view  of  the  question  :  held  that 
actions  for  infringements  of  the  first  term  of  an  extended 
patent,  must,  according  to  the  national  statute  of  limitation, 
be  brought  during  that  term,  or  within  six  years  after  the 
expiration  thereof. 

§  476.  State  statutes  of  limitation  can  never  apply  to  any 
right  of  action  under  a  patent,  if  that  particular  right  is 
subject  to  the  running  of  a  national  statute  of  limitation.8 
This  point  of  law  follows  from  the  fact  that  the  States  have 

1  Sayles'  Executor «.  Railroad  Co.  City  Railroad  Co.   5    Dillon,    562, 
9  Fed.  Rep.  512,  1881.  1887. 

2  Sayles  v.  Richmond,  Fredericks-  5  Hayden    v.    Oriental    Mills,    22 
burg  &    Potomac    Railroad  Co.  4  Fed.  Rep.  103,  1884. 

Baun.  &  Ard.  481,  1879.  6  Sayles  v.  Oregon  Central  Rail- 

3  Sayles  «.  Lake  Shore  and  Mich-  road  Co.  4  Bann.  &  Ard.  429,  1879; 
igan  Southern  Railway  Co.  9  Fed.  Hayden  v.  Oriental  Mills,  22  Fed. 
Rep.  515,  1879.  Rep.   103,  1884  ;  May  v.  County  cf 

4  Sayles  v.  Dubuque  and  Sioux  Logan,  30  Fed.  Rep.  256,  1887. 


CHAP.  XVIII.]  ACTIONS   AT   LAW.  363 

no  right  to  control  the  operation  of  the  patent  laws  ; '  and 
from  the  fact  that  Congress  never  adopted  State  laws  for 
the  goverment  of  Federal  courts,  in  any  case  where  the 
Constitution,  treaties,  or  statutes  of  the  United  States  spec- 
ially attend  to  the  subject.3  The  rule  of  this  section  ap- 
plies'even  to  rights  of  action  that  were  old  enough,  at  the 
time  of  the  approval  of  the  national  limitation,  to  have  been 
fully  barred  by  some  State  limitation,  if  they  had  been  sued 
upon,  and  if  the  State  limitation  had  been  pleaded,  and  had 
been  held  to  be  applicable.  This  last  point  follows  from 
the  rule  that  the  statute  in  force  when  the  suit  is  brought, 
determines  the  right  of  a  party  to  sue  for  a  claim.3  If, 
therefore,  for  example,  an  action  is  begun  after  July  8, 
1870,  and  before  July  8,  1884,  for  infringement  committed 
before  July  8,  1865,  of  a  seventeen  years  patent,  granted 
July  8,  1861 ;  that  action  will  not  be  barred  by  any  five 
years  State  statute  of  limitation ;  because  the  case  is  still 
provided  for  by  the  national  statute  on  the  subject  of  limi- 
tation of  actions  for  infringements  of  patents  ;  and  because 
the  statute  in  force  when  the  action  is  begun,  and  not  any 
statute  which  might  have  been  in  force  when  it  might  have 
been  begun,  is  the  one  to  determine  whether  it  can  be  sus- 
tained. Nor  will  such  a  right  of  action  be  barred  by 
the  national  limitation,  if  it  was  sued  upon  before  July  8, 
1884,  because,  in  that  event,  it  was  sued  upon  within  six 
years  after  the  expiration  of  the  patent.  It  follows  from 
the  foregoing  that  an  action  may  still  be  successfully 
brought  for  any  infringement  which  was  committed  before 
June  22,  1874,  of  any  seventeen-years  patent  which  has  not 
yet  expired,  or  which  expired  less  than  six  years  before 
such  action  is  brought.  It  follows  also,  that  no  action  can 
hereafter  be  commenced,  for  any  infringement  committed 
before  the  last-mentioned  day  of  any  unextended  fourteen- 


1  M'Culloch  t.  Maryland,  4  Whea-  Statutes  at  Large,  Cb.  20,  p.  92. 

ton,  436, 1819.  3  Patterson  v.  Gaines,  6  Howard, 

*  Revised  Statutes,   721 ;  Section  601,  1848. 
34  of  the  Judiciary  Act  of  1789;  1 


364  ACTIONS   AT   LAW.  [CHAP.  XVIII. 

years  patent,  because  every  such  patent  expired  more  than 
six  years  ago.  Whether  any  action  can  still  be  sustained 
upon  any  infringement,  committed  before  the  last-men- 
tioned day,  of  the  first  term  of  any  extended  fourteen-years 
patent,  depends  first  upon  whether  the  extension  expired 
more  than  six  years  before  such  suit  was  brought,  and  if  it 
did  not,  then  the  question  depends  upon  the  answer  to  the 
question  stated  and  explained  in  Section  475  of  this  book. 
Whether  any  action  can  still  be  sustained  for  any  in- 
fringement committed  before  the  last-mentioned  day  of  the 
extended  term  of  any  fourteen-years  patent,  depends  upon 
whether  that  extended  term  expired  more  than  six  years 
before  such  action  was  begun.  Thus  it  appears  that  all  suits 
for  infringements  which  were  committed  before  June  22, 
1874,  may  stand  or  must  fall  according  to  the  national 
statute  of  limitation.  Actions  based  on  infringements  com- 
mitted since  the  last-named  day,  are  subjected  to  no  statute 
of  limitation,  or  to  those  of  the  States  alone. 

§  477.  Whether  State  statutes  of  limitation  apply  to  such 
rights  of  action  for  infringements  of  patents,  as  are  not  sub- 
ject to  any  national  limitation,  is  a  very  important  and 
much  controverted  question.  It  has  never  been  decided  or 
discussed  in  any  Supreme  Court  case ;  but  on  the  circuit, 
it  has  five  times  been  decided  in  the  affirmative,1  and  twelve 
times  in  the  negative,4  and  once  the  judges  leaned  strongly 
to  the  negative  opinion,  though  they  left  the  point  open  to 
further  debate.3  The  fourth  of  the  affirmative  decisions  was 

1  Parker  «.    Hall,    2  Fisher,    62,  515,  1878;  Adams  v.  Stamping  Co. 
1857;  Parker  v.  Hawk,  2  Fisher,  58,  25  Fed.   Rep.   270,   1885  ;   May  «. 
1857  ;  Rich  v.  Ricketts,  7  Blatch.  County  of  Fond  du  Lac,  27  Fed.  Rep. 
230,1870;  Hayden  v.  Oriental  Mills,  692,  1886;  May  v.  County  of  Bu- 
15  Fed.  Rep.  605,  1883;  Royer  c.  chanan,  29  Fed.  Rep.  469, 1886;  May 
Coupe,  29  Fed.  Rep.  362,  1886.  ».  County  of  Logan,  30  Fed.  Rep. 

2  Parker  v.  Hallock,  2  Fisher,  543,  257,  1887;  May  v.  County  of  Cass, 
1857  ;  Collins  «.  Peebles,  2  Fisher,  30  Fed.   Rep.    762,    1887  ;    May  v. 
541,  1865;  Read  v.  Miller,  2  Bissell,  County  of  Rails,  31  Fed.  Rep.  473, 
16,  1867 ;  Wetherill  v.  Zinc  Co.   1  1887. 

Bann.  &  Ard.  489,  1874;  Anthonys.  3  Sayles  «.    Dubuque  and   Sioux 

Carroll,  2  Bann.  &  Ar.  195,  1875;  City  Railroad    Co.   5  Dillon,   562, 

Sayles  v.  Lake  Shore  and  Michigan  1878. 
Southern  Railway  Co.  9  Fed.  Rep. 


CHAP.  XYIII.]  ACTIONS  AT  LAW.  365 

delivered  by  Judge  LOWELL,  and  is  abler  than  either  of  the 
other  opinions  on  that  side  of  the  question ;  while  his  pre- 
decessor, Judge  SHEPLEY,  delivered  the  fifth  of  the  opinions 
which  support  the  negative  view. 

Those  who  hold  the  affirmative  of  the  question,  must  base 
their  argument  on  Section  721  of  the  Revised  Statutes, 
which  is  a  substantial  and  nearly  literal  transcript  of  Sec- 
tion 34  of  the  Judiciary  Act  of  1789,  and  which  provides : 
"  That  the  laws  of  the  several  States,  except  where  the 
Constitution,  treaties,  or  statutes  of  the  United  States 
otherwise  require  or  provide,  shall  be  regarded  as  rules  of 
decision  in  trials  at  common  law,  in  the  courts  of  the  United 
States,  in  cases  where  they  apply."  This  language  appears 
to  be  broad  enough  to  cover  the  application  to  a  patent 
suit,  of  a  State  statute  prescribing  the  time  within  which 
actions  of  trespass  on  the  case  must  be  begun.  But  the 
Supreme  Court  has  held  that :  "  The  section  above  quoted 
was  merely  intended  to  confer  on  the  courts  of  the  United 
States,  the  jurisdiction  necessary  to  enable  them  to  ad- 
minister the  laws  of  the  States." '  If  that  doctrine  is  ad- 
hered to  by  that  court,  it  will  follow  that  State  statutes  of 
limitation  do  not  apply  to  patent  actions  in  the  Federal 
courts.  But  the  holding  in  the  case  of  the  United  States  v. 
Reid,  does  not  seem  to  have  been  constantly  remembered 
by  the  Supreme  Court  justices,  for  while  Chief  Justice 
.TANEY,  who  delivered  that  opinion,  still  sat  upon  the  bench, 
the  court  three  times  decided  that  State  statutes  relevant 
to  rules  of  evidence  are  applicable  to  patent  actions  at  law 
in  Federal  courts." 

In  view  of  the  foregoing  contradictory  authorities,  it  is 
certain  that  the  question  is  deeply  enveloped  in  doubt. 
The  point  ought  therefore  to  be  decided  in  the  negative,  for 
rights  of  property  ought  not  to  be  cut  off  by  any  statute  of 


1  United  States  «.  Reid,  12  How-      1861 ;  Haussknecht  t.  Claypool,  1 
ard,  363,  1851.  Black,  435,  1861;  Wright  v.  Bales, 

*  Vance  v.  Campbell,  1  Black,  430,      2  Black,  535,  1862. 


366  ACTIONS   AT  LAW.  [CHAP.  XVIII. 

limitation,  unless  that  statute  is  clearly  applicable  to  those 
rights.1 

§  478.  Replications  and  subsequent  pleadings  are  seldom 
required  in  patent  cases,  because  most  of  the  pleas  appli- 
cable to  such  cases,  are  pleas  in  bar  by  way  of  traverse, 
and  not  by  way  of  confession  and  avoidance.  The  princi- 
pal exceptions  are  the  plea  of  a  license ;  the  plea  of  a  re- 
lease ;  and  the  plea  of  a  statute  of  limitation.  If  the  plain- 
tiff purposes  to  deny  the  existence  of  a  license  or  release,  as 
the  case  may  be,  his  replication  should  be  by  way  of  trav- 
erse to  the  plea,  and  should  conclude  to  the  country,  and 
thus  tender  issue.  So,  also,  if  the  plaintiff  can  show  that 
the  license  or  release  covered  only  a  part  of  the  infringe- 
ment covered  by  the  declaration,  the  general  replication  by 
way  of  traverse  will  be  sufficient.2  If  the  plaintiff  cannot 
deny  the  existence  of  a  full  paper,  but  purposes  to  show 
that  it  was  obtained  by  duress  or  by  fraud,  or  that  it  has 
been  effectually  revoked,  his  replication  will  state  the  facts 
by  way  of  confession  and  avoidance  of  the  plea,  and  will 
conclude  with  a  verification.  It  will  then  be  the  duty  of 
the  defendant  to  file  a  rejoinder  to  the  replication.  If  he 
can  deny  the  duress,  or  the  fraud,  or  the  revocation,  as  the 
case  may  be,  his  rejoinder  will  be  by  way  of  traverse,  and 
will  conclude  by  tendering  issue.  If,  however,  he  cannot 
deny  the  truth  of  the  replication,  but  can  avoid  its  effect 
by  showing  that  the  plaintiff  freely  ratified  the  license  or 
release  after  the  alleged  duress  terminated,  or  the  alleged 
fraud  became  known  to  him,  or  that  he  annulled  the  revo- 
cation after  making  it,  then  the  defendant's  rejoinder  will 
be  by  way  of  confession  and  avoidance,  and  will  conclude 
with  a  verification,  and  will  render  necessary  a  sur-rejoinder 
from  the  plaintiff,  denying  the  truth  of  the  rejoinder,  and 
putting  himself  upon  the  country. 

§  479.  When  pleaded  to  an  action  based  on  an  infringe- 


1  Bedell  v.  Jan  ney,  4  Oilman  (111.)      art,  32  Michigan,  28,  1875. 
208, 1847;  Elders.  Bradley,  2  Sneed  *  1  Chitty  on  Pleading,  596. 

(Tenn.),  253,  1854;  Ludwig  v.  Stew- 


CHAP.  XVIII.]  ACTIONS   AT  LAW.  367 

ment,  committed  before  June%  22,  1874,  of  an  unextended 
patent,  or  of  the  extended  term  of  an  extended  patent,  the 
national  statute  of  limitation  will  require  a  replication  by 
way  of  traverse,  if  the  plaintiff  intends  to  show  that  the 
action  was  brought  during  the  term  for  which  the  patent 
was  granted  or  extended,  or  within  six  years  after  the  ex- 
piration thereof.  If  he  cannot  show  that,  it  will  be  useless 
for  him  to  prosecute  his  action  further.  No  replication 
by  way  of  confession  and  avoidance,  is  applicable  in  s.uch 
a  case,  because  there  are  no  facts  which  take  a  case  out  of 
the  national  statute  of  limitation.  That  statute  makes  no 
exceptions  in  cases  of  disability  of  the  plaintiffs. 

§  480.  A  State  statute  of  limitation,  when  pleaded  to  an 
action  based  on  an  infringement  of  a  patent,  if  it  is  not 
successfully  met  by  a  demurrer,  will  require  a  replication 
by  way  of  confession  and  avoidance,  based  on  some  cause, 
which,  according  to  the  laws  of  the  particular  State  in 
which  the  suit  is  pending,  is  sufficient  to  take  the  case  out 
of  the  statute.  If  there  is  no  such  cause,  the  plaintiff  must, 
abandon  his  action,  or  stand  upon  his  demurrer,  and  hav- 
ing suffered  judgment,  go  to  the  Supreme  Court  on  a  writ 
of  error.  If  such  a  replication  is  filed,  the  defendant  must 
file  a  rejoinder  by  way  of  traverse,  and  tender  issue  by 
putting  himself  upon  the  country. 

§  481.  A  similiter  must  be  filed  or  added  by  or  on  behalf 
of  the  other  party,  whenever  either  the  plaintiff  or  defend- 
ant properly  tenders  issue.  As  the  party  to  whom  issue  is 
well  tendered,  has  no  option  but  to  accept  it,  the  similiter 
may  be  added  for  him.  It  is  a  mere  matter  of  form,  but 
it  is  a  form  which  should  always  be  attended  to,  in  com- 
mon-law pleading.  Its  omission  has  sometimes  constituted 
a  fatal  defect.1 

§  482.  A  demurrer  may  be  interposed,  by  either  party  in 
an  action  at  law,  to  any  pleading  of  his  opponent,  except 
another  demurrer.1  When  a  demurrer  is  interposed,  the 

1  Earle    t>.    Hall,    22    Pickering         2 1  Chitty  on  Pleading,  661,  666. 
(Mass.)  102,  1839. 


368  ACTIONS   AT   LAW.  [CHAP.  XVIII. 

court  will  examine  all  the  pleadings  in  the  case,  and  will 
generally  decide  against  the  party  who  first  filed  a  substan- 
tially defective  one.1  The  principal  exception  to  this  rule  is, 
that  where  the  declaration  is  the  pleading  demurred  to,  the 
demurrer  will  not  be  sustained  if  it  is  too  large  :  that  is,  if  it 
is  pointed  at  an  entire  declaration,  some  independent  part 
of  which  is  good  in  law.2  This  exception  does  not  apply  to 
demurrers  to  pleas,3  or  replications,4  or  rejoinders,5  for  it  is 
in  the  nature  of  those  pleadings  to  be  entire,  and  if  bad  in 
part,  to  be  bad  for  the  whole. 

§  483.  Demurrable  declarations  occur  in  patent  cases 
only  when  the  plaintiff's  pleader  omits  some  of  the  allega- 
tions which  are  necessary  parts  of  such  a  pleading ;  or 
when  he  makes  those  allegations  in  improper  form ;  or 
where  he  makes  the  statement  of  infringement  cover  a  space 
of  time,  part  or  all  of  which  is  remote  enough  to  be  barred 
by  some  applicable  statute  of  limitation.  Every  such  fault, 
except  those  of  the  last  sort,  may  be  readily  cured  by 
amendment.  It  will  rarely  occur  that  the  whole  of  an  in- 
fringement declared  upon,  can  plausibly  be  claimed  to  be 
barred  by  a  statute  of  limitation  ;  but  it  may  not  hereafter 
be  unknown  for  declarations  to  allege  that  the  infringement 
sued  on,  began  during  the  original  term  of  an  extended 
patent,  and  was  continued  into  the  extended  term ;  or  to 
allege  that  it  began  at  a  point  of  time  more  than  six  years 
before  the  beginning  of  the  action,  and  was  continued  till 
after  that  limit  was  passed.  If,  in  such  a  case,  the  defend- 
ant thinks  that  he  can  successfully  interpose  the  national, 
or  a  six-year  State  statute  of  limitation,  to  that  part  of  the 
claim  which  arose  under  the  first  term  of  the  patent,  or  to 
that  part  of  the  infringement  which  occurred  more  than  six 
years  before  the  bringing  of  the  suit,  as  the  case  may  be  ; 
he  may  raise  the  question  by  a  special  demurrer,  aimed  at 
the  questionable  parts  of  the  rights  of  action  respectively. 


1  1  Chitty  on  Pleading,  668.  4  1  Chitty  on  Pleading,  644. 

2  1  Chitty  on  Pleading,  665.  *  1  Chitty  on  Pleading,  651. 

3  1  Chitty  on  Pleading,  546. 


CHAP.  XVIII.]  ACTIONS  AT  LAW.  369 

If  in  such  a  case  lie  demurs  generally  to  the  whole  declara- 
tion, his  demurrer  will  be  overruled  ;  because  it  will  ap- 
pear on  the  argument,  that  an  independent  divisible  part 
of  the  rights  of  action  sued  upon,  are  in  any  event  unbarred 
by  the  statute.1 

§  484.  Demurrers  to  pleas  may  be  frequently  expected 
in  patent  actions  at  law,  as  long  as  a  question  continues  to 
be  entertained  relevant  to  the  validity  of  any  of  the  twenty- 
seven  defences  heretofore  enumerated  and  explained."  Most 
of  those  defences  rest  upon  unquestioned  grounds  :  upon  ex- 
press statutes  of  Congress,  or  upon  express  decisions  of  the 
Supreme  Court.  But  a  few  of  them  rest,  at  this  writing,  upon 
argumentative  deductions  from  such  statutes,  or  from  such 
decisions,  or  rest  upon  obiter  dicta  of  that  high  tribunal. 
There  will  always  be  pleaders  who  will  call  those  deduc- 
tions and  those  dicta  in  question,  as  occasion  serves,  until 
they  are  passed  upon  by  the  Supreme  Court  in  judicial  de- 
cisions. Where  the  various  defences  are  distinctly  made 
in  special  pleas,  a  demurrer  to  each  of  those  which  are 
thought  to  be  bad  in  law,  is  the  proper  mode  of  presenting 
the  question  to  the  court.  Where  a  statute  of  limitation 
is  pleaded  to  the  whole  of  a  right  of  action,  only  a  part  of 
which  is  old  enough  to  be  barred  thereby,  a  demurrer  to 
the  plea  will  be  sustained,  because  a  plea  which  is  bad  in 
part  is  bad  altogether.3 

§  485.  A  demurrer  to  the  replication  is  proper  in  an 
action  at  law,  wherein  the  declaration  alleges  infringement 
before  June  22,  1874,  of  a  patent  which  expired  more  than 
six  years  before  the  beginning  of  the  action,  and  wherein  a 
plea  sets  up  the  national  statute  of  limitation,  and  wherein 
the  replication  alleges  disability  of  the  plaintiff.  Such  a 
demurrer  will  result  in  a  judgment  for  the  defendant,  be- 
cause disability  is  not  a  legal  excuse  for  delay  to  sue,  in 
respect  of  the  national  statute  of  limitation. 

§  486.  A  joinder  in  demurrer  is  the  proper  response  to 


1 1  Chitty  on  Pleading,  665.  8  1  Cbitty  on  Pleading,  546. 

2  Sections  440  to  477  of  this  book. 


370  ACTIONS   AT   LAW.  [CHAP.  XVIII. 

such  a  pleading  in  a  patent  action,  as  well  as  any  other.  If 
a  plaintiff  attempts  to  demur  to  a  demurrer,  or  refuses  to 
join  issue  of  law  upon  it,  he  thereby  discontinues  his  ac- 
tion, and  if  a  defendant  does  so  he  discontinues  his  de- 
fence.1 

§  487.  The  trial  of  an  action  at  law  for  infringement  of  a 
patent  may  be  by  a  jury,  or  by  a  judge,  or  by  a  referee. 
The  first  of  these  sorts  of  trial  is  the  only  proper  one,  ex- 
cept in  cases  where  both  parties  agree  to  substitute  one  of 
the  others.  Cases  of  the  kind  may  be  tried  by  the  judge 
where  the  parties  file  with  the  clerk,  a  stipulation  in  writing 
waiving  a  jury ; s  and  trial  by  a  referee  appointed  by  the 
court,  with  the  consent  of  both  parties,  is  a  mode  of  trial 
fully  warranted  by  law.3 

§  488.  Trial  by  jury  must,  in  the  absence  of  contrary 
consent  by  the  parties,  be  by  a  jury  of  twelve  men.  Una- 
nimity is  necessary  to  a  verdict  of  a  jury,  in  a  Federal  court, 
even  in  California  or  Nevada ;  though  the  statutes  of  those 
States  provide,  that  in  their  courts,  a  legal  verdict  may  be 
found  when  three  fourths  of  the  members  of  a  jury  agree. 
The  laws  of  those  States  on  that  point  are  not  covered  by 
Section  721  of  the  Revised  Statutes,  and  so  made  rules  of 
decision  in  Federal  courts ;  because  the  Federal  Constitu- 
tion otherwise  provides.  That  provision  is  found  in  its 
seventh  amendment,  and  in  the  following  language  :  "  In 
suits  at  common  law,  where  the  value  in  controversy  shall 
exceed  twenty  dollars,  the  right  of  trial  by  jury  shall  be 
preserved."  It  is  true  that  unanimity  was  not  necessary  to 
the  verdicts  of  juries  in  England  till  after  the  reign  of 
Edward  the  First,4  and  that  it  was  never  required  in  Scot- 
land.6 But  the  kind  of  "  trial  by  jury,"  known  in  England 
and  in  the  United  States  when  the  seventh  amendment  was 


1  Gould's  Pleadings,  Chap.  IX.  Fleta,  Liber  IV.  Chap.  9;  Britton, 

Sec.  33;  1  Chitty  on  Pleading,  669.  Liber  II.  Chap.  21. 

'-'  Revised  Statutes,  Section  649.  5  Barrington  on  the  Statutes,  Chap. 

3  Beckers  r>.  Fowler,  2  Wallace,  29,  p.  20;  17  &  18  Victoria,  Chap. 

123,  1864.  59;  22  &  23  Victoria,  Chap.  7;  31  & 

4Bracton,  Liber  IV.   Chap.    19;  32  Victoria,  Chap.  100,  Sec.  48. 


CHAP.  XVIII.]  ACTIONS  AT  LAW.  371 

proposed  by  Congress,1  and  when  it  was  ratified  by  three 
fourths  of  the  States,"  is  doubtless  the  kind  of  trial  guaran- 
teed by  that  amendment.  Therefore  no  law  providing  for 
any  other  kind  of  trial  by  jury  can  be  enforced  in  a  United 
States  court. 

§  489.  The  practice  in  actions  at  law  in  the  Federal  courts 
is  not  uniform  throughout  the  United  States.  There  are 
no  general  rules  governing  the  Circuit  Courts  when  sitting 
as  law  courts,  though  there  is  such  a  system  prescribed  for 
them  when  sitting  in  equity.  On  the  law  side,  each  Circuit 
Court  is  governed,  in  matters  of  practice,  by  the  laws  of 
the  State  in  which  it  is  established,  so  far  as  those  laws  are 
applicable ; 3  and  on  points  where  no  law  exists,  it  is  gov- 
erned by  rules  or  customs  of  its  own  making  or  observance. 
No  Act  of  Congress  is  necessary  to  enable  United  States 
courts  to  make  and  enforce  its  own  rules  of  practice.  It  is 
only  necessary  that  such  rules  be  not  repugnant  to  the  laws 
of  the  United  States.4 

§  490.  The  rules  of  evidence  which  are  used  in  the  trial 
of  patent  causes,  are  the  ordinary  rules  of  the  common  law, 
as  modified  by  the  statutes  of  the  particular  States  in  which 
such  trials  occur,6  and  as  adapted  to  the  circumstances  of 
patent  litigation  by  the  decisions  of  the  United  States  courts. 

§  491.  Evidence  to  support  his  declaration,  must  of 
course  be  introduced  by  a  plaintiff  in  a  patent  suit,  before 
the  defendant  can  be  called  upon  to  prove  any  defence. 
The  first  item  of  such  evidence  consists  of  the  letters  patent 
sued  upon,  or  of  a  written  or  printed  copy  of  the  same 
authenticated  by  the  seal  and  certified  by  the  Commissioner 
or  the  Acting  Commissioner  of  the  Patent  Office.'  Either 
the  letters  patent,  or  such  a  copy  thereof,  is  prima  facie 
evidence  of  the  validity  of  the  letters  patent,  unless  it  ap- 


1  September  25,  1789.  *  Vance  v.  Campbell,  1  Black,  427, 

*  November  3,  1791.  1861;   Haussknecht  v.   Claypool,   1 

3  Revised  Statutes,  Section  914.  Black,  431,  1861;  Wright  v.  Bales, 

4  Heckers  «.  Fowler,  2  Wallace,  2  Black,  535,  1862. 

123,  1864.  '  Revised  Statutes,  Section  892. 


372  ACTIOHS  AT  LAW.  [CHAP.  XVIII. 

pears  on  its  face  not  to  be  such  a  form  of  document  as  the 
statute  prescribes.  Some  of  the  adjudicated  cases  which 
touch  this  subject,  apply  the  rule  to  novelty  only,  and  not 
to  validity  in  general.1  The  reason  of  the  rule,  as  far  as  it 
relates  to  novelty,  is  twofold.  A  presumption  of  novelty 
arises  from  the  inventor's  statutory  oath  that  he  verily  be- 
lieves himself  to  be  the  first  and  original  inventor  ; "  and  a 
like  presumption  arises  from  the  fact  that  the  Commis- 
sioner, before  he  grants  a  patent,  is  bound  to  cause  an  ex- 
amination to  be  made  of  the  alleged  new  invention  ; 3  which 
examination,  in  practice,  includes  all  relevant  prior  patents 
and  printed  publications,  of  which  the  Patent  Office  con- 
tains any  evidence.  Now  the  first  of  these  grounds  of  pre- 
sumption does  not  exist  in  regard  to  any  quality  of  validity 
except  novelty,  and  except  regularity  in  point  of  sole  or 
joint  application  for  a  patent  for  a  sole  or  joint  invention. 
The  second  ground  is,  however,  a  much  stronger  foundation 
for  a  presumption  of  validity  in  other  respects,  than  it  is 
for  a  presumption  of  novelty.  The  Commissioner  of  Pat- 
ents has  no  means  of  determining  how  the  novelty  of  an 
invention  may  be  affected  by  things  of  which  the  Patent 
Office  contains  no  record,  and  of  which  his  own  narrow 
experience  contains  no  recollection.  If  he  understands 
the  law,  he  has,  on  the  contrary,  every  means  of  deciding 
whether  a  particular  application  for  a  patent  covers  a  statu- 
tory subject  of  such  a  grant.  So  also  he  can  pass  upon  the 
application  in  point  of  invention,  with  more  certainty  than 
he  can  pass  upon  it  in  point  of  novelty.  He  has  nearly 
every  means  to  determine  the  utility  of  the  thing  covered 
thereby,  and  thus  to  negative  the  fourth  defence.  It  is  clear 
that  no  outside  evidence  need .  be  introduced  by  a  plaintiff, 
to  anticipate  either  the  fifth  or  the  sixth  defence,  because 
the  law  does  not  favor  an  abandonment,  and  throws  upon  a 
party  who  seeks  to  obtain  the  benefit  of  a  forfeiture,  the 


1  Blanchard  v.  Putnam,  8  Wallace,      Tilghman,  19  Wallace,  287,  1873. 
420,  1869;  Seymour  v.  Osborne,  11          2  Revised  Statutes,  Section  4892. 
Wallace,    516,    1870;    Mitchell    v.          3  Revised  Statutes,  Section  4893. 


CHAP.  XVIII.]  ACTIONS  AT   LAW.  373 

burden  of  proving  it  beyond  a  reasonable  doubt.1  Letters 
patent  are  therefore  prima  facie  evidence  of  their  own  va- 
lidity, as  against  either  of  these  defences.  The  same  thing 
is  true  of  the  seventh  defence,  though  for  a  different  reason. 
If  a  patent  is  obnoxious  to  this  defence,  it  is  because  the 
Commissioner  of  Patents  made  an  error  in  granting  it, 
similar  to  that  which  he  makes  when  he  grants  a  reissue 
for  a  different  invention  from  any  indicated,  suggested,  or 
described  in  the  original.  But  there  is  always  a  presump- 
tion of  law  against  the  hypothesis  of  such  an  error ;  and 
that  presumption  prevails  until  such  an  error  is  proved." 
The  fact  that  the  statute  expressly  provides  a  particular 
method,  in  which  the  eighth  defence  may  be  interposed  by 
a  defendant,3  sufficiently  shows,  that  until  it  is  set  up  and 
proved,  the  plaintiff  need  not  attempt  to  disprove  it,  further 
than  by  the  introduction  of  his  letters  patent.  As  against 
the  ninth  and  tenth  defences,  the  letters  patent  are  also 
sufficient  prima  facie  evidence ; 4  because  both  those  de- 
fences are  contradicted  by  the  inventor's  oath  accompany- 
ing the  application,  even  more  positively  than  want  of 
novelty  is  contradicted  by  that  oath.6  No  inventor  can 
positively  know  whether  his  invention  is  absolutely  novel, 
and  therefore  his  oath  covers  only  his  belief  on  that  point ; 
but  every  inventor,  knows  the  facts  relevant  to  whether  he 
was  the  sole  inventor,  or  only  a  joint  inventor,  of  the  process 
or  thing  covered  by  his  application.  Letters  patent  appear 
to  be  prima  facie  evidence  of  their  own  validity,  as  against 
the  eleventh  defence,  for  the  same  reason  which  makes 
them  so  as  against  the  eighth.  Relevant  to  the  twelfth 
and  thirteenth  defences,  the  Commissioner's  decision  in 
granting  a  patent,  is  entitled  to  far  more  weight  than  it  is 
on  the  question  of  novelty,  because  he  has  all  the  data .  for 
forming  an  opinion  about  the  fulness  and  clearness  of  a 

'McCormickfl.  Seymour,2  Blatcli.  4  Byerly  «.  Oil  Works,   31  Fed. 

256,  1851.  Rep.  74,  1887 ;  Puetz  v.  Bransford, 

8  Seymour  «.  Osborne,  11  Wallace,  31  Fed.  Rep.  463,  1887. 

516,  1870.  *  Revised  Statutes,  Section  4893. 

3  Revised  Statutes,  Section  4920. 


374  ACTIONS   AT   LAW.  [CHAP.  XVIII. 

written  document  before  him,  but  not  all  tlie  data  for  an 
opinion  touching  the  novelty  of  what  that  document  sets 
forth.  It  follows  that  the  resulting  presumption  of  validity, 
in  respect  of  these  defences,  is  even  stronger  than  the  pre- 
sumption of  novelty.  The  fourteenth  defence  is  based  on 
partial  want  of  novelty,  and  as  letters  patent  are  undoubt- 
edly prima  facie  evidence  of  entire  novelty,  it  follows  that 
they  constitute  prima  facie  evidence  that  no  disclaimer  is 
needed.  The  conclusion  of  the  whole  matter,  therefore,  is 
that  an  original  letters  patent  is  prima  facie  evidence  of  its 
own  entire  validity.1 

§  492.  Reissue  letters  patent  are  also  prima  facie  evidence 
of  their  own  validity,  on  all  of  the  three  points  which  are  in- 
volved in  that  question.  They  are  so  in  respect  of  the 
fifteenth  defence ;  because  the  fact  that  the  Commissioner 
assumed  jurisdiction,  by  treating  the  original  letters  patent 
as  a  proper  subject  for  a  reissue,  is  at  least  prima  facie  evi- 
dence that  he  had  jurisdiction.4  They  are  so  in  respect  of 
the  sixteenth  defence ;  because  the  presumtion  is  that  the 
Commissioner  knew  the  law,  and,  knowing  it,  would  not 
grant  a  broadened  reissue  after  a  long  lapse  of  time  from 
the  date  of  the  original.3  They  are  so  in  respect  of  the 
seventeenth  defence,  because  the  presumption  is  that  the 
Commissioner  would  not  violate  the  law  by  granting  a  re- 
issue for  a  different  invention  from  any  which  the  original 
letters  patent  shows  was  intended  to  have  been  claimed 
therein. 

§  493.  An  extension  of  a  patent  is  prima  facie  evidence  of 
its  own  validity  as  against  the  eighteenth  defence,  on  the 
same  ground  that  a  reissue  is,  as  against  the  fifteenth. 
That  ground  is  the  presumption  that  the  Commissioner  of 
Patents  will  not  assume  jurisdiction  in  any  case  not  pro- 
vided for  by  law.4 

1  Konold  9.  Klein,  3  Bann.  &  Ard.          3  Clark  v.  Wooster,  119  U.  S.  386, 
226,  1878  ;  Royer  «.  Coupe,  29  Fed.      1886. 

Rep.  362,  1886.  4  Brooks  v.  Bicknell,  3  McLean, 

2  Brooks  v.  Bicknell,  3  McLean,      258,  1844. 
258,  1843. 


CHAP.  XVIII.]  ACTIONS   AT   LAW.  375 

§  494.  It  is  an  undoubted  presumption  of  law,  that  letters 
patent,  which  appear  on  their  face  to  be  in  full  force,  are  so 
in  fact.  Such  a  document  is  therefore  prima  facie  evidence 
that  it  neither  has  been  repealed  by  a  decree  of  court,  nor 
has  expired  because  of  the  expiration  of  some  foreign  patent 
for  the  same  invention.  It  follows  that  neither  the  nine- 
teenth nor  twentieth  defence  need  be  anticipated  by  a  plain- 
tiff, when  introducing  his  prima  facie  evidence. 

§  495.  After  introducing  the  letters  patent  in  evidence, 
unless  the  plaintiff  is  himself  the  patentee,  his  next  step  is 
to  prove  his  title  to  the  right,  upon  the  infringement  of 
which  the  action  is  based.  To  this  end  he  must  prove  him- 
self to  be  the  assignee  of  the  patent ;  or  at  least  a  grantee 
under  the  patent,  as  to  the  territory  wherein  the  alleged  in- 
fringement occurred.  He  may  do  either  of  these  things,  by 
introducing  in  evidence  the  original  assignments  or  grants 
which  constitute  his  chain  of  title,  after  having  proved  them 
according  to  the  rules  of  the  common  law.  It  has  also  been 
repeatedly  decided  by  Circuit  Courts,  that  duly  certified 
copies  of  the  Patent  Office  records  of  such  assignments  or 
grants,  are  competent  primary  evidence  of  the  original 
documents  themselves.1  These  three  decisions  have  been 
generally  acquiesced  in  for  more  than  twenty  years,  and 
few  rules  of  patent  law  have  been  more  frequently  made 
the  basis  of  action  by  counsel  and  by  courts  than  the  doc- 
trine just  mentioned.  But  it  hardly  seems  justified  by  the 
statute  upon  which  it  is  based,2  and  may  even  yet  be  over- 
thrown by  the  Supreme  Court. 

§  496.  It  is  not  necessary  for  any  plaintiff  to  prove  in  his 
prima  facie  evidence  that  the  defendant  has  no  license  or 
release  with  which  to  defend ;  *  nor  can  it  be  required  of 
him  to  testify  that  he  never  made  or  sold  any  specimen  of 

1  Brooks  v.   Jenkins,  3  McLean,  J  Revised  Statutes,   Sec.  892 ;  16 

436,    1844 ;   Parker  ».    Haworth,  4  Statutes  at  Large,  Ch.  230,  Sec.  57, 

McLean,  370,  1848  ;  Lee  v.  Blandy,  p.  207;  5  Statutes  at  Large,  Ch.  357, 

2  Fisher,  91,  1860;  Dederick  v.  Ag-  Sec.  4,  p.  118. 

ricultural  Co.   26    Fed.   Rep.    763,  3  Fisher  «.  Hayes,  6  Fed.  Rep.  79, 

1886.  1881. 


376  ACTIONS   AT   LAW.  [CHAP.  XVIII. 

the  invention  without  marking  it  "patented."  Evidence 
relevant  to  the  twenty-first,  twenty-third,  and  twenty-fourth 
defences,  must  therefore  be  taken  by  the  defendant,  before 
the  plaintiff  can  be  called  upon  to  disprove  them. 

§  497.  Proof  of  the  making,  selling,  or  using,  by  the  de- 
fendant, of  a  specimen  or  specimens  of  a  process  or  thing 
which  the  plaintiff  claims  is  covered  by  his  patent,  consti- 
tutes the  next  step  to  be  taken  in  proving  a  prima  facie  case. 
This  point  is  often  covered  by  a  stipulation  of  the  parties. 
Defendants  are  generally  wise  when  they  make  such  stipu- 
lations, because  any  attempts  to  conceal  the  nature  of  their 
doings,  are  likely  to  prejudice  the  welfare  of  their  defences. 
But  in  cases  where  the  defendants  have  no  refuge  but  con- 
cealment, the  point  of  proof  may  be  one  of  difficulty,  for 
courts  of  law  have  no  power  to  order  inspections  of  a  de- 
fendant's works ; '  though  the  defendant  may  be  called  as  a 
witness,  and  compelled  to  describe  what  he  has  done  ; 3  and 
a  discovery  of  the  defendant's  doings  may  be  obtained  by  a 
bill  in  equity  filed  in  aid  of  an  action  at  law.'  Where  a  de- 
fendant cannot  be  relied  upon  to  testify  fairly  and  fully,  the 
plaintiff  must  secure  other  evidence ;  for  it  is  necessary  to  a 
verdict  in  an  action  at  law  for  an  infringement  of  a  patent, 
that  both  the  nature  and  the  extent  of  that  infringement  be 
shown  to  the  jury,  by  satisfactory  proof.  Evidence  of  the 
nature  of  a  defendant's  doings,  is  the  first  element  of  evi- 
dence of  infringement ;  and  evidence  of  their  extent,  is  an 
indispensable  part  of  the  necessary  evidence  of  damages.4 

§  498.  Evidence  of  infringement  is  completed  with  evi- 
dence of  the  defendant's  doings,  if  what  he  did  was  obvi- 
ously and  unquestionably  identical  with  what  is  covered  by 
the  patent  in  suit,6  or  if  he  is  estopped  from  denying  iden- 

1  Parker  v.  Bigler,  1  Fisher,  287,  Mfg.  Co.  19  Fed.  Rep.  519,  1884. 
1857.  5  Jennings  v.  Kibbe,  10  Fed.  Rep. 

2  Roberts  v.  Walley,  14  Fed.  Rep.  669,  1882  ;  Barrett  «.  Hall,  1  Mason, 
169,  1882.  471,  1818;  Hayes  v.  Bickelhoupt,  23 

3  Colgate  v.  Compagnie  Fraugaise,  Fed.  Rep.  184, 1885;  Freese  v.  Swart  - 
23  Fed.  Rep.  85,  1885.  child,  35  Fed.  Rep.  141,  1888. 

4  National  Car  Brake  Shoe  Co.  v. 


CHAP.  XVIII.]  ACTIONS  AT  LAW.  377 

tity  between  those  doings  and  that  patent.1  But  such  is  not 
often  the  case.  Differences  are  generally  apparent ;  and 
where  they  are  not  obviously  immaterial,  it  is  necessary  to 
introduce  expert  testimony  to  show  that  they  are  really  of 
that  character,  and  to  show  that  the  defendant's  doings 
actually  did  constitute  an  infringement  of  the  plaintiff's 
patent.  Experts  in  patent  cases  are  mainly  of  two  kinds : 
mechanical  and  chemical  experts.  A  mechanical  expert  is  a 
person  who  has  extensive  theoretical  and  practical  knowl- 
edge of  mechanics  ;  and  a  chemical  expert  is  a  person  who 
has  like  knowledge  of  chemistry.  The  opinions  of  such  ex- 
perts are  admissible  upon  the  points  of  fact  to  which  they 
are  relevant ;  but  in  order  to  have  much  weight,  they  must 
be  accompanied  by  statements  of  good  reasons  upon  which 
they  are  based.1  In  deciding  between  contradictory  expert 
testimony,  juries  should  consider  the  respective  reasons, 
ability,  knowledge,  and  fairness  of  the  experts.3  To  judge 
according  to  their  number  or  their  fame  would  be  unsafe. 
The  wealthier  litigants  are  generally  those  who  employ  the 
more  numerous  and  the  more  expensive  expert  witnesses ; 
but  it  is  not  always  the  wealthier  litigant  who  is  right  in  a 
controversy,  nor  always  the  more  famous  expert  who  is 
right  in  his  opinion.  The  carefully  digested  views  of  a 
young  and  studious  scientist,  may  often  be  more  nearly  true 
than  the  more  hastily  formed  opinion  of  a  more  experienced 
man. 

§  499.  No  expert  can  know  whether  a  particular  thing, 
done  or  made  by  a  defendant,  is  the  same  as  any  thing 

1  Time  Telegraph  Co.  n.  Himmer,  298,  1857 ;  Carter  «.  Baker,  1  Saw- 

19  Fed.  Rep.  322,  1884.  yer.  512, 1871;  Spaulding  *>.  Tucker. 

9  United  States  Annunciator  Co.  Deady,  649,  1869  ;  Cahoon  v.  Ring, 

«.  Sanderson,  3  Blatch.  184,  1854 ;  1  Clif.  592,  1861 ;  Cox  «.  Griggs,  1 

Livingston  v.  Jones,  1  Fisher,  521,  Bissell,  362, 1861;  Conover  0.  Roach, 

1859  ;  Conover  v.  Rapp,  4  Fisher,  4  Fisher,  12, 1857  ;  Whipple  v.  Mfg. 

57,  1859.  Co.  4  Fisher,  29,  1858  ;  Conover  v. 

3  Johnson  v.  Root,  1  Fisher,  351,  Rapp,  4  Fisher.  57, 1859 ;  Waterbury 

1853 ;  Many  D.  Sizer,  1  Fisher,  17,  Brass  Co.  v.  New  York  Brass  Co.  3 

1849  ;  Hudson  v.  Draper,  4  Fisher,  Fisher.  43,  1858 ;  Bierce  v.  Stocking, 

256,  1870 ;  Page  ».  Ferry,  1  Fisher,  11  Gray  (Mass.),  174,  1858. 


378  ACTIONS  AT  LAW.  [CHAP.  XVIII. 

covered  by  a  particular  patent,  until  he  ascertains  what 
that  patent  covers.  But  the  latter  question  is  one  of  con- 
struction for  the  court,  and  not  a  question  of  evidence,  to  be 
*  sworn  to  by  an  expert,  and  decided  by  the  jury.  In  the 
regular  course  of  proceedings  in  trials  at  law,  as  well  as  in 
hearings  in  equity,  the  construction  of  the  patent  is  not  an- 
nounced by  the  judge  till  after  the  evidence  is  taken.  This 
practice  makes  it  proper  to  put  hypothetical  questions  to  ex- 
pert witnesses.  The  hypothesis  in  such  a  question,  is  one 
which  embodies  that  construction  of  the  patent  upon  which 
the  examining  counsel  thinks  it  both  safe  and  sufficient 
to  rely.  If,  when  charging  the  jury,  the  judge  gives  a  dif- 
ferent construction  from  that  embodied  in  the  hypothetical 
question,  then  the  answer  to  that  question  will  be  seen  to 
be  immaterial,  and  the  jury  will  do  right  to  disregard  it. 
Examining  counsel  ought  therefore  to  be  very  certain  that 
his  hypothetical  construction  is  the  true  one  ;  or  otherwise, 
to  put  as  many  hypothetical  questions  as  there  are  probable 
favorable  constructions.  Doing  the  latter  he  may  have  a 
favorable  answer  upon  which  to  argue  to  the  jury,  if  he  se- 
cures from  the  judge  a  construction  which  corresponds  with 
either  of  his  hypothetical  questions.  A  statement  of  a  wit- 
ness, that  a  particular  thing  does  or  does  not  infringe  a 
particular  patent,  is  inadmissible  in  evidence  ;  because  that 
statement  includes  a  construction  of  the  patent,  and  con- 
struction of  patents  is  the  duty  of  courts,  and  not  of  experts. 
§  500.  Though  not  permitted  to  testify  to  the  construction 
of  a  patent,1  experts  are  sometimes  called  upon  to  testify  to 
facts  which  positively  control  that  construction.  The  follow- 
ing are  examples  of  such  cases.  "Where  the  state  of  the  art 
is  the  subject  of  inconsistent  evidence,  and  where  the  con- 
struction of  the  patent  depends  on  what  is  the  fact  in  that 
regard ;  the  judge  will  not  charge  the  jury  that  the  patent 
means  thus  and  so,  but  will  tell  them  that  if  they  find  the 
state  of  the  art  to  be  so  and  so,  then  the  patent  is  entitled 

1  Wateibury   Brass   Co.   «.   New  York  Brass  Co.  3  Fisher,  54,  1858. 


CHAP.  XVIII.]  ACTIONS   AT   LAW.  379 

to  such  and  such  a  construction.1  In  cases  of  this  kind,  it 
will  frequently  occur  that  the  jury,  in  deciding  upon  the 
state  of  the  art,  must  receive  information  from  experts  rele- 
vant to  the  mechanical  nature  of  prior  things,  as  well  as 
information  from  other  sources  relevant  to  the  prior  exist- 
ence of  those  things.  All  questions  of  identity  of  things 
are  questions  for  the  jury,  in  an  action  at  law,2  and  are 
therefore  proper  to  be  testified  about  by  experts.  "Where 
a  patent  covers  such  of  the  things  described,  as  perform  a 
particular  function,  it  is  the  business  of  the  jury  to  decide, 
and  therefore  proper  for  an  expert  to  testify,  which  those 
things  are.3 

§  501.  The  cross-examination  of  experts,  cannot  extend  to 
inquiries  into  the  characteristics  of  things  not  relevant  to 
the  case,  put  to  them  for  the  purpose  of  testing  their  knowl- 
edge or  their  fairness  ;  because  if  the  answers  appeared  to 
be  undeniably  correct,  they  would  be  wholly  immaterial, 
and  if  thought  to  be  erroneous  they  could  be  shown  to  be 
so,  only  by  the  testimony  of  others,  who  might  themselves 
be  the  mistaken  ones.  To  allow  such  a  question,  would 
thus  operate  to  introduce  an  immaterial  issue  of  fact  into  a 
case,  and  to  draw  the  attention  of  the  jury  away  from  the 
issues  of  the  pleadings.4 

§  502.  The  last  part  of  a  plaintiffs  prima  facie  evidence, 
consists  in  proof  of  the  amount  of  his  damages,  sometimes 
supplemented  by  evidence  tending  to  show  that  a  judgment 
ought  to  be  entered  for  an  amount  greater  than  the  actual 
damages  sustained  by  him.5  The  subject  is  mentioned  in 
this  connection  for  the  sake  of  symmetry  ;  but  it  is  so  large 
that  it  constitutes  the  theme  of  a  separate  chapter  of  this 
book.  To  that  chapter,  recourse  may  be  had  for  detailed 
information  upon  the  point. 


1  Burdell    e.   Denig,   U.   S.   722,  1852. 

1875.  4  Odiorne  v.  Winkley,  2  Gallison, 

2  Tyler  v.  Boston,  7  Wallace,  327,  51,  1814. 

1868.  5  Revised  Statutes,  Section  4919. 

3  Silsby  v.  Foote,  14  Howard,  218, 


380  ACTIONS  AT  LAW.  [CHAP.  XVIII. 

§  503.  The  next  part  of  a  trial  is  the  introduction  of  evi- 
dence by  the  defendant  to  sustain  his  defences.  The  pos- 
sible defences  in  patent  cases  are  twenty-seven  in  number. 
In  prior  sections  in  this  chapter,  they  are  consecutively 
numbered  for  purposes  of  easy  reference,  and  are  treated 
in  respect  of  the  pleadings  which  they  respectively  require, 
and  the  results  which  they  respectively  produce  in  patent 
actions  at  law.  It  is  now  convenient  to  set  forth,  in  the 
same  order,  some  of  the  leading  points  of  the  law  of  evi- 
dence applicable  to  each. 

§  504.  The  first  defence  generally  requires  evidence  to 
show  that  the  terms  of  art  or  science  which  are  used  in  the 
patent  have  such  a  meaning  that  the  court  is  bound  to 
construe  the  patent  to  be  one  for  a  principle,  or  for  some- 
thing other  than  a  process,  machine,  manufacture,  compo- 
sition of  matter,  or  design.  This  general  statement  is  ven- 
tured, though  the  cases  in  which  patents  have  been  assailed 
with  the  first  defence  are  so  few,  that  but  little  law  is  es- 
tablished on  the  subject. 

§  505.  The  second  defence  may  sometimes  be  supported 
by  facts  of  which  the  court  will  take  judicial  notice.1  But 
evidence  to  show  the  state  of  the  art,  is  often  required  to 
show  want  of  invention.  A  patent  granted  for  an  implement 
of  agriculture,  consisting  of  a  hoe-handle  with  a  hoe  on  one 
end  and  a  rake  on  the  other,  would  be  void  for  want  of  inven- 
tion, even  if  both  new  and  useful.2  The  court  would  take 
judicial  notice  of  the  prior  existence  of  handles  having  hoes 
attached  thereto,  and  of  other  like  handles  having  rakes 
fastened  at  one  end ;  and  on  the  basis  of  that  judicial  notice, 
would  pronounce  such  a  patent  to  be  wholly  invalid.  A 
patent  for  a  particular  alleged  combination,  in  a  rare  and 
complicated  machine,  may  also  be  open  to.  precisely  the 
same  sort  of  objection  ;  while  the  facts  upon  which  it  rests 
in  the  particular  case,  may  be  wholly  unknown  to  people 


1  Brown  «.  Piper,  91  U.   S.   37,      111  U.  S.  606,  1883. 
1875  ;  Slawson  v.  Railroad  Co.  107         2  Reckendorfer  v.  Faber,  92  U.  S. 
U.  S.  649,  1882;  Phillips  t>.  Detroit,      347,  1875. 


CHAP.  XVIII.]  ACTIONS  AT  LAW.  381 

generally,  and  wholly  unknown  to  judges  who  hear  patent 
causes,  though  well  understood  by  certain  classes  of  me- 
chanics. In  the  latter  case,  it  is  necessary  to  introduce  evi- 
dence of  those  facts  in  order  to  show  want  of  invention. 
Such  evidence  may  consist  of  proof  of  the  prior  existence 
of  the  parts  of  the  alleged  combination,  and  proof  of  the 
fact  that  their  union  in  the  machine  constitutes  not  a  real 
combination,  but  an  aggregation  only.  This  statement  of 
the  considerations  which  show  a  necessity  for  evidence  to 
prove  lack  of  invention,  when  that  lack  is  based  on  the  rule 
that  aggregation  is  not  invention,  will  also  furnish  the  key 
to  inquiry  when  that  lack  is  based  on  any  other  of  the  va- 
rious rules  on  that  subject. 

§  506.  The  third  defence,  and  the  facts  which  support  it, 
are  explained  at  large  in  the  third  chapter  of  this  book.  In 
this  connection,  it  is  only  necessary  to  explain  the  kinds  of 
evidence  by  which  those  facts  may  be  proved,  and  to  state 
the  special  rules  which  govern  the  weight  of  such  evidence. 

Where  novelty  is  duly  sought  to  be  negatived  by  prior 
United  States  patents,  duly  certified  copies  of  those  patents 
are  admissible  ; '  and  it  is  a  general  practice  among  patent 
lawyers  to  waive  the  certificate,  where  a  printed  copy  from 
the  Patent  Office  is  presented  by  opposing  counsel.  Such 
printed  copies  are  really  more  reliable  than  any  certified 
manuscript  copy  ;  because  they  are  generally  printed  from 
the  same  form  as  the  original  letters  patent,  and  are  there- 
fore absolutely  correct ;  while  there  is  always  a  possibility 
of  error  in  copying  a  document  with  a  pen.  But  the  Patent 
Office  does  not  furnish  printed  copies  of  patents  which  were 
granted  prior  to  1866 ;  and  as  to  those  patents,  a  certified 
manuscript  copy  is  the  best  to  be  had.  The  certified  copies 
of  letters  patent,  which  are  admissible  in  evidence,  include 
not  only  such  individual  copies  as  are  furnished  to  private 
persons  on  payment  of  the  proper  fees  ;  but  also  the  certi- 
fied bound  volumes  of  copies,  which  are  gratuitously  dis- 
tributed by  the  Commissioner  of  Patents  to  all  the  Stale 

1  Revised  Statutes,  Sec.  892. 


382  ACTIONS   AT   LAW.  [CHAP.  XVIII. 

and  Territorial  capitols,  and  to  all  the  United  States  Dis- 
trict Court  clerk's  offices,  except  those  which  are  located  at 
the  capitals  of  the  States  and  Territories.1 

Where  prior  foreign  patents  are  duly  pleaded  to  negative 
novelty,  they  may  be  proved  prima  facie,  by  duly  certified 
copies  of  those  copies  thereof,  which  are  kept  in  the  United 
States  Patent  Office.2  If  plenary  proof  of  foreign  letters 
patent  is  required,  it  can  be  made  by  producing  a  copy 
thereof,  duly  certified  by  that  officer  of  the  foreign  govern- 
ment which  issued  the  patent,  who  corresponds  to  the  Com- 
missioner of  Patents  in  the  United  States.3  Where  an  error 
creeps  into  a  certified  copy  of  any  letters  patent,  it  may  be 
corrected  by  another  and  more  carefully  compared  certified 
copy  from  the  same  office.4  Letters  patent,  to  be  admis- 
sible, must  agree  in  name  and  date  with  the  statements  in 
the  pleadings,  in  proof  of  which  they  are  offered.5 

§  507.  Prior  printed  publications  must  be  proved  by  the 
introduction  of  a  specimen  of  the  printed  thing  which  is  re- 
lied upon,  and  by  satisfactory  evidence  that  it  was  pub- 
lished before  the  date  of  the  patent  in  suit.  Parol  testi- 
mony of  the  contents  of  such  printed  matter  is  generally 
inadmissible.6  The  testimony  of  a  person,  that  the  printed 
thing  produced  was  published  before  the  date  of  the  inven- 
tion in  suit,  if  believed  by  the  jury,  would  be  sufficient 
evidence  on  that  point.  What  evidence  short  of  that  in 
convincing  force,  would  answer  the  purpose  in  hand,  has 
not  been  judicially  settled.  Printed  publications  are  not 
generally  evidence  of  the  truth  of  the  statements  which 
they  contain.7  But  where  a  book  or  public  periodical  ap- 
pears to  have  been  published  in  a  specified  year,  or  on  a 
specified  day,  and  where  it  contains  matter  which  furnishes 


1  Revised  Statutes,  Sec.  490.  5  Bellas  v.   Hays,   5  Sergeant  & 

2  Revised  Statutes,  Sec.  893.  Rawle  (Penn.)  427,  1819. 

3  Schoerken  «.  Swift  &  Courtney  *  McMahon    v.    Tyug,   14   Allen 
&  Beecher  Co.   7  Fed.   Rep.   469,  (Mass.),  167,  1867. 

1881.  '  Seymour  •».  McCormick,  19  How- 

4  Brooks  v.  Jenkins,  3  McLean,  ard,  106,  1856. 
432,  1844. 


CHAP.  XVIII.]  ACTIONS  AT  LAW. 

collateral  evidence  of  the  genuineness  of  the  date,  and 
where  it  is  free  from  the  suspicion  of  having  been  changed 
after  it  was  put  forth,  it  will  probably  be  received  in  evi- 
dence, without  direct  testimony  that  it  was  published  when 
it  purports  to  have  been. 

§  508.  Prior  knowledge  or  use  of  a  thing  patented,  may  be 
proved  by  the  testimony  of  the  person  or  persons  who  had 
such  prior  knowledge,  or  who  know  of  such  prior  use. 
Such  testimony  includes  three  points :  the  existence,  the 
character,  and  the  date  of  the  thing  previously  known  or 
used.  Where  a  witness  relies  wholly  on  his  memory  for 
all  three  of  these  points,  his  testimony,  though  admissible, 
is  not  strong.  It  is  generally  impossible  to  remember  with 
certainty  the  particular  construction  of  a  thing  of  which  no 
specimen  is  known  to  remain  in  existence ;  and  most  mem- 
ories are  wholly  unreliable  on  bare  questions  of  dates. 
It  is  therefore  desirable  to  fortify  testimony  of  prior  knowl- 
edge or  use  by  producing  the  anticipating  thing,  or  a  speci- 
men thereof,  and  by  connecting  the  history  of  that  thing 
with  events  about  which  there  is  no  room  for  doubt.  Where 
the  anticipating  thing  cannot  be  produced,  the  testimony 
which  supports  its  prior  existence,  may  still  prevail,  if  the 
construction  of  the  article  was  so  simple,  and  so  well 
understood,  as  to  be  unlikely  to  be  forgotten,  and  especially 
if  a  number  of  credible  witnesses  agree  in  regard  to  its 
character  and  its  date. 

§  509.  Parol  evidence  of  an  anticipating  thing,  is  likely 
to  be  met  by  other  parol  evidence,  tending  to  show  that 
such  a  thing  never  existed  at  the  place  alleged ;  or  that  it 
was  substantially  different  from  the  patented  invention 
sought  to  be  anticipated ;  or  that  it  did  not  exist  at  the 
alleged  place  till  after  the  date  of  the  patented  invention. 
Testimony  of  the  first  sort  is  negative  in  its  character,  and 
therefore  not  so  weighty  as  the  affirmative  evidence  which 
it  contradicts.1  But  it  does  not  need  to  be  so  weighty,  in 
order  to  overthrow  the  latter,  for  a  mere  preponderance  of 

1  Union  Sugar  Refinery  V.  Matthiessen,  2  Fisher,  600,  1865. 


384  ACTIONS   AT  LAW.  [CHAP.  XVIII. 

evidence  will  not  sustain  the  defence  of  want  of  novelty. 
That  defence,  in  order  to  prevail,  must  be  proved  beyond  a 
reasonable  doubt.1  Testimony  of  an  anticipating  thing 
may  also  be  met  by  evidence  that  the  witness  purchased  a 
license  under  the  patent ;  but  such  answering  evidence  is 
generally  entitled  to  very  little  weight ; 2  because  the  wit- 
ness may  not  have  understood  that  the  facts  of  which  he 
knew  constituted  a  legal  defence  to  the  patent,  or  he  may 
have  preferred  to  pay  for  a  license,  rather  than  to  undergo 
the  annoyance  and  incur  the  expense  which  is  generally  in- 
cident to  actions  for  infringement. 

§  510.  When  anticipating  matter  is  undeniably  proved  to 
have  existed  before  the  date  of  the  patent  in  suit,  want  of 
novelty  is  prima  facie  proved  ; 3  but  the  plaintiff  may  meet 
that  evidence  by  proof  that  he,  or  his  assignor,  made  the 
invention  at  a  still  earlier  date.  He  may  sometimes  do  this 
by  means  of  a  certified  copy  of  the  specification  and  draw- 
ings of  his  original  application  ;  and  he  may  sometimes  do 
so  prima  facie,  by  means  of  a  like  copy  of  the  original  pe- 
tition upon  which  the  letters  patent  were  granted  ;  but  not 
by  parol  evidence  relevant  to  the  time  when  that  petition, 
specification,  or  drawing  was  filed.4  If  his  application  was 
not  early  enough  for  the  purpose,  the  plaintiff  may  prove 
the  real  date  of  his  invention  by  proving  the  date  of  either 
of  those  facts,  which,  in  the  chapter  on  novelty,  were  shown 
to  constitute  the  birth  of  an  invention  thereafter  patented.5 
If  that  fact  was  a  tangible  thing,  its  establishment  requires 
the  production  and  proof  of  that  thing,  or  requires  proof  of 
its  loss  or  destruction,  and  the  best  obtainable  evidence  of 
what  its  character  was." 

§  511.  The  fourth  defence  requires  evidence  that  the 
patented  invention  will  not  perform  any  function  which  is 


1  Section  76  of  this  book.  4  Wayne   v.   Winter,   6  McLean, 

2  Evans  v.  Eaton,  3  Wheaton,  454,  344,  1855. 

1818.  b  Section  70  of  this  book. 

3  Havemeyer  v.  Randall,  21  Fed.  6  Richardson    v.    Hicks,    1    Mac- 
Rep.  404,  1884.  Arthur's  Patent  Cases,  836,  1854. 


CHAP.  XVIII.]  ACTIONS   AT  LAW.  385 

ascribed  to  it  in  the  letters  patent ; '  or  proof  that  its  func- 
tion is  not  a  useful  one,  within  the  meaning  of  the  law  on 
that  subject. 

The  first  of  these  sorts  of  proof  may  consist  of  testimony 
of  a  person  who  is  skilful  in  the  art  to  which  the  invention 
pertains,  and  who  has  endeavored,  in  good  faith,  to  make 
the  patented  thing  work,  and  has  >been  unable  to  do  so.  In 
plain  cases,  it  may  also  consist  of  the  testimony  of  such  a 
person,  who  has  not  actually  experimented  with  a  specimen 
of  the  patented  thing,  but  who  is  able  to  demonstrate 
theoretically,  that  it  is  impossible  for  such  a  specimen  to 
operate.  And  in  all  cases,  the  evidence  must  show  a  total 
incapacity  in  the  invention  to  do  anything  claimed  for  it, 
because  neither  imperfect  operation,  nor  a  total  failure  to 
perform  part  of  the  claimed  functions,  will  sustain  a  defence 
of  want  of  utility.8  And  either  practical  or  theoretical  evi- 
dence of  want  of  utility  in  the  sense  now  under  considera- 
tion, may  be  overthrown  by  the  testimony  of  a  person  who 
has  succeeded  in  causing  the  patented  process  or  thing  to 
produce  a  result  ascribed  to  it  in  the  patent. 

The  second  of  these  sorts  of  proof  may  consist  of  evidence 
that  the  function  of  the  patented  thing  is  one  which  people 
generally  profess  to  condemn  as  dangerous  or  immoral. 
Conventional  and  not  absolute  ethics  is  the  criterion  of 
judgment  on  this  point.  Patents  for  revolvers  are  accord- 
ingly sustained,  though  it  cannot  reasonably  be  doubted 
that  the  invention  of  those  death-dealing  instruments  was  a 
disaster  to  mankind. 

§  512.  The  fifth  defence  may  be  supported  by  any  com- 
petent evidence  which  shows  that  the  inventor  relinquished 
all  expectation  to  secure  a  patent,  and  formed  an  expecta* 
tion  that  the  invention  would  always  be  free  to  the  public.4 
Such  evidence  may  be  either  direct  or  circumstantial,  but 
a  mere  preponderance  of  evidence  cannot  sustain  this 

1  Rowe  v.  Blanchard,  18  Wiscon-  1872. 

sin,  462,  1864.  4  Babcock  v.  Degener,  1  Me  Ar- 

1  Sections  82  to  84  of  this  book.  tour's  Patent  Cases,  616,  1859. 
3  Seymour  v.  Marsh,  6  Fisher,  115, 


380  ACTIONS  AT   LAW.  [CHAP.  XVIII. 

defence  of  actual  abandonment,  because  it  is  one  of  those 
which,  in  order  to  prevail,  must  be  proved  beyond  a  rea- 
sonable doubt.1 

§  513.  The  sixth  defence  requires  proof  that  the  patented 
thing  was  in  public  use  or  on  sale  at  a  date  more  than  two 
years  prior  to  that  upon  which  the  application  was  made 
for  the  patent.  But  it  is  no  longer  necessary  to  prove  in 
addition,  that  the  public  use  or  sale  relied  upon,  occurred 
with  the  consent  of  the  inventor.2 

§  514  The  seventh  defence  requires  the  introduction  of 
the  original  application  papers,  or  certified  copies  thereof ; 
and  in  all  except  very  plain  cases,  it  requires  the  testimony 
of  experts  to  explain  the  outward  embodiment  of  the  terms 
contained  in  the  original  letters  patent,  and  in  the  original 
application  respectively.3 

§  515.  The  eighth  defence  calls  for  evidence  that  another 
than  the  patentee  conceived  the  invention  before  he  did ; 
and  that  the  other  used  reasonable  diligence  in  adapting 
and  perfecting  the  same  ;  and  that  the  patentee  knew  of 
that  prior  conception,  and  obtained  the  patent  surrepti- 
tiously ;  or,  if  he  did  not  know  of  the  prior  conception,  that 
he  obtained  the  patent  unjustly,  by  obtaining  it  without 
notice  to  the  prior  conceiver,  though  the  latter  had  a  caveat 
on  file  in  the  Patent  Office  at  the  time." 

§  516.  The  ninth  defence  requires  proof  that  another  than 
the  patentee  was  joint  inventor  with  him  of  the  thing  cov- 
ered by  the  patent.  Testimony  on  this  point  must  be  strong 
in  order  to  prevail,  because  the  tendency  of  courts  and 
juries  is  to  assign  such  evidence  to  the  category  of  mechan- 
ical assistance  in  construction,  or  to  that  of  suggested  sub- 
stitution of  equivalents.  » 


1  McCormick  v.  Seymour,2  Blatch.  awam  Co.  t>.  Jordan,  7  Wallace.  587 

256,  1851.  1868  ;    Pbelps  «.  Brown,  4  Blatch. 

4  Andrews  v.  Hovey ,  123  U.  S.  267;  362,  1859. 

124  U.  b.  694,  1887.  5  Agawam  Co.  v.  Jordan,  7  Wal- 

3Bischoff®.  Wethered,  9  Wallace,  lace,   587,   1868;    Pitts  v.   Hall,   2 

812,  1869.  Blatch.  229, 1851;  Locke  v.  Lane  Co. 

4  Revised  Statutes,  Sec.  4920  ;  Ag-  35  Fed.  Rep.  293,  1888. 


CHAP.  XVIII.]  ACTIONS   AT  LAW.  387 

§  517.  The  tenth  defence  is  more  likely  to  be  successful 
in  the  proof,  than  the  ninth ;  because  it  may  not  only  be 
based  on  the  counterpart  of  the  circumstances  which  under- 
lie the  latter,  but  also  on  other  circumstances,  where  those 
do  not  exist.  It  has  sometimes  happened  that  an  inventor, 
having  sold  an  undivided  half  interest  in  his  invention,  has 
joined  with  his  vendee  in  applying  as  joint  inventor  for  a 
patent  therefor.  Such  errors  have  been  known  to  result 
from  ignorance  of  the  law ;  and  such  an  error  has  been  said 
to  have  occurred  in  one  case,  on  account  of  a  desire  to  give 
an  important  patent  the  benefit  of  the  name  of  a  more 
distinguished  scientist  than  he  who  was  the  real  producer 
of  the  subject  of  the  claim.  But  in  any  case,  it  is  certain 
that  very  clear  and  unequivocal  evidence  is  necessary  to 
support  this  defence.1 

§  518.  The  eleventh  defence  calls  for  proof  that  the  letters 
patent  contains  less  than  the  whole  truth  relevant  to  the  in- 
vention, or  that  it  contains  more  than  is  necessary  to  pro- 
duce the  desired  result,  and  that  the  fault  arose  from  inten- 
tion to  deceive  the  public.  But  positive  and  direct  evidence 
is  not  required  on  the  latter  point.  It  is  sufficiently  shown 
by  proof  of  any  circumstances  which  satisfy  the  jury  that 
such  intention  existed.2 

§  519.  The  twelfth  defence  can  be  supported  by  no  evi- 
dence except  that  of  persons  skilled  in  the  art  to  which  the 
invention  pertains,  or  with  which  it  is  most  nearly  connected. 
A  patent  for  a  chemical  composition  or  process  cannot  be 
overthrown,  on  the  ground  of  an  insufficient  description,  by 
the  testimony  of  a  mechanical  expert ;  nor  can  a  patent  for 
an  improvement  of  a  loom  be  overthrown,  on  that  ground, 
by  the  testimony  of  a  machinist  skilled  only  in  printing- 
presses.  If  a  description  is  sufficiently  full,  clear,  concise, 


1  Gottfried  r.  Brewing  Co.  5  Barm.  «.   Sewing   Machine  Co.   86   Fed. 

&  Ard.  4, 1879;  Butler  v.  Bainbridge,  Rep.  585,  1888. 

29  Fed.  Rep.  142, 1886;  Consolidated  8  Gray  v.  James,  1  Peters'  Circuit 

Apparatus  Co.  v.  Woerle,  29  Fed.  Court  Reports,  394,  1817;  Dyson  t>. 

Rep.  449, 1887;  Schlicht  &  Field  Co.  Danforth,  4  Fisher,  133,  1865. 


388  ACTIONS  AT   LAW.  [CHAP.  XVIII. 

and  exact,  to  be  effectually  understood  by  any  person  skilled 
in  that  kind  of  machinery,  or  other  subject  of  a  patent,  it  is 
sufficiently  so  to  meet  this  defence.1 

§  520.  The  thirteenth  defence  may  sometimes  succeed 
without  any  evidence  outside  of  the  letters  patent  themselves. 
It  will,  however,  always  be  prudent  to  fortify  the  defence 
by  the  testimony  of  an  expert  who  can  show  that  the  out- 
ward embodiment  of  the  terms  of  the  claim  is  uncertain  in 
character  or  in  extent. 

§  521.  The  fourteenth  defence  requires  several  items  of 
evidence  for  its  support.  It  requires  proof,  that  one  or 
more  of  the  claims  of  the  patent  are  void  for  want  of  em- 
bodying a  subject-matter  of  a  patent/  or  for  want  of  inven- 
tion, or  for  want  of  novelty ; s  and  that  the  patentee  has  long 
known  the  facts  which  make  it  invalid  in  that  behalf.  No 
disclaimer  is  ever  necessary,  in  the  absence  of  all  of  the  first 
three  of  these  circumstances  ;  and  no  delay  to  file  one  is 
unreasonable  in  the  absence  of  the  fourth.  Indeed,  proof 
of  a  necessity  for  a  disclaimer,  and  of  long-existing  knowl- 
edge of  the  facts  out  of  which  that  necessity  arose,  will  not 
always  sustain  this  defence ;  because  delay  to  file  a  dis- 
claimer is  not  unreasonable,  so  long  as  there  is  any  reason- 
able doubt  whether  the  known  facts  constitute  a  necessity 
for  such  a  document.4 

§  522.  The  fifteenth  defence  can  seldom  be  supported  by 
evidence  that  the  original  patent  was  neither  inoperative 
nor  invalid  by  reason  of  a  defective  or  insufficient  specifica- 
tion ;  because  inoperativeness,  from  one  of  these  causes, 
exists  whenever  the  patent  does  not  secure  and  cover  all  the 
inventions  which  it  indicated,  suggested,  or  described,  and 
which  might  lawfully  have  been  claimed  in  it ;  *  and  because, 
when  not  granted  on  account  of  such  inoperativeness,  re- 


1  Loom  Co.  v.  Higgins,  105  U.  S.  *  Silsby  v.  Foote,  20  Howard,  290, 

580,  1881.  1857;  Matthews  v.  Flower,  25  Fed. 

*  O'Reilly  v.  Morse,  15  Howard.  Rep.  834,  1885. 

121,  1853.  *  Wilson  v.  Coon,  18  Blatch;  532, 

3  Revised  Statutes,  Section  4922.  1880. 


CHAP.  XVIII.]  ACTIONS   AT  LAW.  389 

issues  are  generally  granted  on  account  of  invalidity  which 
arose  by  reason  of  a  defective  or  insufficient  specification, 
or  by  reason  of  a  too  extensive  claim.1  This  defence  there- 
fore generally  requires  to  be  sustained  by  evidence  showing 
that ;  whatever  inoperativeness  or  invalidity  on  account  of 
defective  or  insufficient  specification,  or  on  account  of  too 
extensive  claims,  is  to  be  found  in  the  original  patent ;  the 
error  arose  otherwise  than  by  inadvertence,  accident,  or 
mistake.  The  absence  of  all  three  of  these  mishaps  from 
the  history  of  the  preparation  of  any  original  specification, 
may  be  proved  by  evidence  which  shows  that  the  statements 
or  claims  alleged  to  have  been  omitted  in  one  or  another  of 
these  ways,  were  in  fact  omitted  with  deliberation  or  with 
care,  or  were  omitted  because  they  had  to  be,  in  order  to 
secure  the  original  patent,4  or  were  disclaimed  in  order  to 
secure  an  extension  thereof.3  Evidence  to  show  either  of 
the  last  two  of  these  circumstances,  if  it  exists  at  all,  may 
generally  be  found  among  the  correspondence  on  file  in  the 
Patent  Office,  and  may  be  introduced  in  the  form  of  certi- 
fied copies  of  the  letters  which  contain  it.4 

§  523.  The  sixteenth  defence  can  be  supported  by  the  in- 
troduction of  the  original  patent,  if  when  it  is  compared 
with  the  reissue,  the  latter  appears  to  claim  something 
which  the  original  did  not,  and  appears  to  have  been  ap- 
plied for  a  long  time  after  the  original  was  granted.  How 
long  this  space  of  time  must  be  in  order  to  sustain  this 
defence,  depends  largely  upon  the  particular  circumstances 
of  particular  cases.  Different  spaces  of  time  which  have 
been  held  to  be  sufficient  for  the  purpose,  are  collated  in 
the  chapter  on  reissues,6  and  the  burden  is  on  the  plaintiff 
to  excuse  delay  for  more  than  two  years.' 

§  524.  The   seventeenth  defence  always  requires  to  bo 


1  Revised  Statutes,  Section  4916.  4  Revised  Statutes,  Section  893. 

s  James  v.  Campbell,  104  U.  S.  5  Section  227  of  this  book. 

356,  1881.  6  Wollensak  v.  Reiher,  115  U.  8. 

3  Leggett  9.  Avery,  101  U.  S.  256,  101,  1884;  Hoskin  t>.  Fisher,  125  U. 

1879.  S.  222,  1887. 


390  ACTIONS   AT   LAW.  [CHAP.   XVIII. 

supported  by  the  introduction  of  the  original  patent ; 1  and 
generally  requires  expert  testimony  showing  that  the  out- 
ward embodiment  of  something  claimed  in  the  reissue,  is 
substantially  different  from  anything  described  in  the  orig- 
inal patent  and  apparently  intended  to  be  claimed  therein. 
The  judge  will  not  reject  such  expert  testimony,  unless  the 
case  is  so  clear  that  he  would  have  decided  the  question 
on  a  demurrer,  if  it  had  been  presented  to  him  by  that 
pleading. 

§  525.  The  eighteenth  defence  requires  evidence  that 
neither  the  inventor,8  nor  any  executor  or  administrator  of 
the  inventor,3  made  any  proper  application  in  writing  for 
the  extension  of  the  patent.  It  will  not  be  enough  to  pro- 
duce a  certified  copy  of  an  application  filed  out  of  due  time, 
by  the  proper  person,  or  one  filed  in  due  time,  by  an  im- 
proper person ;  because  the  presumption  is,  that  the 
Commissioner  would  not  have  granted  the  extension  with- 
out a  proper  application  therefor ;  and  because  the  pro- 
duction of  an  improper  application  does  not  negative  the 
existence  of  a  proper  one. 

§  526.  The  nineteenth  defence  would  require  to  be  sup- 
ported by  the  introduction  of  an  officially  attested  copy  of 
the  record  of  the  court  repealing  the  patent,4  or  if  that  re- 
cord is  proved  to  have  been  destroyed  by  fire,6  or  rendered 
illegible  by  wear  or  time,6  and  not  restored  by  the  court  to 
Avhich  it  pertains,7  it  may  be  proved  by  a  witness  who  ex- 
amined and  copied  it  when  it  was  still  unharmed.8  But 
parol  evidence  will  not  be  admitted  of  a  record  of  which 
only  a  part  is  lost.  The  part  which  still  exists,  must  be 
produced  or  proved  by  an  officially  attested  copy.9 

1  Seymour ».  Osborne,  11  Wallace,  6  Little    v.    Downing,     37    New 

516,  1870.  Hampshire,  355,  1858. 

4  Revised  Statutes,  Section  4924.  7  Revised   Statutes,    Sections  899 

3  Wilson  v.  Rousseau,  4  Howard,  and  900. 

673,  1846.  8 1  Wharton  on  Evidence,  135. 

4  Revised  Statutes,  Section  905.  9  Nims  v.  Johnson,  7  California, 
6  United     States    v.    Delespine's      110,  1857. 

Heirs,  12  Peters,  654,  1838. 


CHAP.  XVIII.]  ACTIONS   AT   LAW.  391 

§  527.  The  twentieth  defence  calls  for  the  introduction  in 
evidence,  of  a  properly  certified  copy  of  the  foreign  patent 
which  is  relied  upon  to  curtail  the  term  of  the  patent  in 
suit ;  and  if  the  parties  offer  no  testimony  to  aid  the  court 
in  determining  whether  the  foreign  patent,  so  proved,  is  for 
the  same  invention  as  the  United  States  patent  upon  which 
the  action  is  based,  then  the  court  will  determine  that  point 
from  an  inspection  of  the  two  documents.1  But  if  expert 
evidence  on  that  subject  is  offered,  it  will  doubtless  be  re- 
ceived." 

§  528.  The  twenty-first  defence  is  supported  by  proof  that 
the  plaintiff  has  made  or  sold  one  or  more  specimens  of  the 
patented  article  without  marking  it  "  patented,"  together 
with  the  day  and  year  whereon  the  patent  was  granted.' 
When  such  evidence  is  introduced,  the  burden  is  shifted  to 
the  plaintiff,  to  show  that  before  suit  was  brought  the  de- 
fendant was  duly  notified  that  he  was  infringing  the  patent, 
and  that  he  continued  to  infringe  after  such  notice.4 

§  529.  The  twenty-second  defence  may  sometimes  be  sus- 
tained by  means  of  pointing  out  faults  in  the  plaintiff's 
proof  of  title.  Where  that  proof  is  apparently  complete,  it 
can  be  attacked  only  by  the  introduction  of  assignments  or 
grants  in  writing,  which  intervene  between  some  of  the  links 
of  the  plaintiff's  chain  of  title  in  such  a  way  as  to  destroy 
or  impair  its  continuity.  The  numerous  points  of  law 
relevant  to  title  are  explained  in  the  eleventh  chapter  of 
this  book.  It  is  enough  to  say  in  this  connection  that  no 
title  will  be  recognized  in  a  court  of  law,  unless  it  is  evi- 
denced by  instruments  in  writing,6  and  that  such  instru- 
ments may  probably  be  proved  by  duly  certified  copies  of 
their  record  in  the  Patent  Office." 

§  530.  The  twenty-third   defence   may  be   sustained  by 


1  De  Florezc.  Raynolds,  17  Blatch.  *  Goodyear  «.  Allyn,  6  Blatcb.  36, 

439,  1880.  1868. 

*  Bischoff  v.  Wethered,  9  Wallace,  4  Revised  Statutes,  Section  4898. 

812,  1869.  '  Section  495  of  this  book. 

3  Revised  Statutes,  Section  4900. 


392  ACTIONS  AT   LAW.  [CHAP.  XVIII. 

evidence  of  a  written  or  a  parol  license,  or  of  an  express  or 
an  implied  license.  But  no  written  license  can  be  proved 
by  a  certified  copy,  because  the  law  does  not  provide  for 
recording  licenses,  and  because,  if  such  documents  are 
sometimes  copied  into  the  record  books  of  the  Patent 
Office,  they  do  not  thereby  become  Patent  Office  records. 
Licenses  form  the  subject  of  the  twelfth  chapter  of  this 
book,  and  to  that  chapter  recourse  may  be  had  for  further 
information  in  regard  to  the  proper  evidence  to  support 
this  defence. 

§  531.  The  twenty-fourth  defence  may  be  sustained  by 
proof  of  a  total  or  partial  release,  given  after  the  infringe- 
ment was  committed  and  before  the  action  was  commenced, 
or  it  may  be  sustained  pro  tanto,  by  a  partial  release  given 
even  after  the  action  was  begun.1  A  paper  cannot  be  a  re- 
lease, if  executed  before  the  infringement  to  which  it  refers 
was  committed,  because  no  man  can  relinquish  what  he 
does  not  possess. 

Whether  a  release,  given  only  to  a  joint  infringer  with  the 
defendant,  can  be  invoked  by  the  defendant  himself,  is  a 
question  to  which  no  categorical  answer  can  at  present  be 
given.  It  depends  upon  the  question  whether  contribution 
can  be  enforced  between  infringers,  and  that  point  has 
never  been  settled  by  the  courts.  Nothing  more  useful  can 
therefore  be  said  in  this  connection  than  to  state  the  princi- 
ples upon  which  the  two  questions  seem  to  depend. 

The  doctrine  that  there  can  be  no  contribution  between 
tort-feasors,  does  not  generally  apply  to  cases  where  the 
wrong-doers  suppose  their  doings  to  be  lawful.2  This  is 
nearly  always  true  of  infringers  of  patents.  When  they  in- 
fringe, they  are  often  ignorant  of  the  patents  which  they 
violate,  or  if  they  know  of  the  patents,  they  are  apt  to  give 
themselves  the  benefit  of  every  suggested  ground  for  doubt, 
and  thus  suppose  that  their  doings  do  not  constitute  an  in- 
fringement. Their  wrong-doing  is  mcdaprohibita,  rather  than 


1  Burdell  v .  Denig,  92  U.  S.  721,          2  Bailey  ».  Bussing,  28  Connecti- 
1875.  cut,  461, 1859. 


CHAP.  XVIII.]  ACTIONS  AT  LAW.  .        393 

mala  in  se.  Therefore,  it  seems  to  be  generally  if  not  uni- 
versally true,  that  where  one  of  several  joint  infringers  is 
sued  alone,  and  suffers  and  pays  a  judgment  for  the  joint 
infringement,  he  may  compel  his  co-infringers  to  contribute 
their  due  portion  of  that  payment,  by  means  of  an  action  to 
enforce  its  refunding.  That  being  so,  it  will  follow  that  a 
release  to  one  joint  infringer,  will  operate  to  release  all  his 
co-infringers  from  the  claim  of  the  patentee.  "Where  con- 
tribution can  be  enforced  between  tort-feasors,  a  full  re- 
lease to  one  must  release  all ;  for  if  it  did  not  do  so,  it 
would  not  fully  release  that  one.  The  releasee  would  not 
be  fully  protected  by  his  release,  unless  his  co-infringers 
would  also  be  protected  by  it,  because  otherwise  the  re- 
leasee would  still  be  liable  to  an  action  for  contribution 
brought  against  him  by  a  joint  tort-feasor  who  had  been 
compelled  to  respond  in  damages  for  the  joint  infringement. 
The  true  rule  therefore  appears  to  be,  that  a  plain  release 
given  to  either  of  several  joint  infringers,  may  be  success- 
fully invoked  in  a  court  of  law,  not  only  by  the  nominal 
releasee,  but  also  by  either  or  all  of  his  co-infringers. 

§  532.  The  twenty-fifth  defence  may  be  successful  with- 
out any  evidence,  because  the  burden  of  proof  is  upon  a 
plaintiff  to  show  an  infringement,1  and  because  some  plain- 
tiffs fail  to  sustain  that  burden.  Accordingly,  in  one  lead- 
ing law  case  the  defendant  was  the  prevailing  party  on  the 
circuit,  and  in  the  Supreme  Court,  though  the  plow  which 
he  made  was  nearly  identical  with  that  covered  by  the 
plaintiff's  patent,  and  though  the  defendant  introduced  no 
evidence  on  the  subject  of  infringement,  nor  indeed  on  any 
other.*  So  also,  in  a  leading  case  in  equity,  the  defendant, 
though  beaten  on  the  circuit,  successfully  interposed  the 
defence  of  non-infringement  in  the  Supreme  Court,  without 
any  evidence  on  that  side  of  the  issue,  and  against  the  con- 
trary testimony  of  several  experts.3  But  these  were  some- 

1  Brooks  v.   Jenkins,  3  McLean,  336,  1843. 

453, 1844;  Royer  t>.  Mfg.  Co.  20  Fed.  3  Railway  Co.  v.  Sayles,  97  U.  8. 

Rep.  853,  1884.  554,  1878. 

*  Prouty  t>.  Ruggles,   16  Peters, 


394        .  ACTIONS   AT   LAW.  [CHAP.  XVIII. 

what  clear  cases  of  non-infringement,  and  it  would  be  inju- 
dicious to  rely  upon  such  a  defence  without  evidence 
to  support  it,  in  any  case  wherein  the  question  of  in- 
fringement is  really  debatable  in  the  light  of  the  law. 
Where  a  thing  made  or  used  or  sold  by  the  defendant,  is 
proved  or  is  stipulated,  and  where  a  competent  expert  tes- 
tifies that  it  is  substantially  the  same  as  that  which  appears 
to  be  covered  by  the  patent  in  suit ;  it  is  always  advisable, 
and  generally  necessary,  for  the  defendant  to  introduce  evi- 
dence tending  to  show  non-infringement,  if  he  means  to 
insist  upon  that  defence.1  Evidence  of  this  sort  may  con- 
sist of  the  testimony  of  experts  who  are  acquainted  with 
the  letters  patent  in  suit,  and  with  the  doings  of  the  defend- 
ant, and  are  of  opinion  that  those  doings  are  substantially 
different  from  everything  which  appears  to  be  secured  by 
the  letters  patent,  and  can  give  an  intelligent  reason  for 
that  opinion.  This  testimony,  like  all  other  testimony  of 
experts  on  questions  of  infringement,  is  necessarily  based 
on  hypothetical  constructions  of  the  patents  in  suit,  and  is 
therefore  to  be  disregarded,  if  the  judge  finds  those  hypo- 
thetical constructions  to  be  substantially  erroneous. 

Whether  the  fact  that  the  defendant  conformed  his  do- 
ings to  a  junior  patent  is  admissible  as  tending  to  show 
non-infringement  of  the  patent  in  suit,  is  a  question  which 
the  Supreme  Court  once  decided  in  the  affirmative,2  and 
afterward  in  the  negative.3  The  reason  of  the  matter  is 
with  the  later  decision,  because  a  thing  may  be  a  patentable 
improvement  on  a  prior  thing,  at  the  same  time  that  it  is  a 
clear  infringement  of  a  patent  for  that  thing. 

§  533.  The  twenty-sixth  defence  requires  to  be  proved  as 
pleaded.  Where  it  depends  upon  estoppel  in  pais,  it  may 
be  proved  by  parol,  or  by  the  production  of  documents, 
according  as  the  ground  of  the  estoppel  consists  of  things 
done  or  words  spoken,  or  consists  of  words  which  were 


1  Bennet  v.   Fowler,   8  Wallace,       252,  1853. 

447,  1869.  3  Blanchard  v.    Putnam,  8   Wal- 

2  Corning  v.  Burden,  15  Howard,      lace,  420,  1869. 


CHAP.  XVIII.]  ACTIONS   AT   LAW.  395 

committed  to  writing.  Where  the  defence  depends  upon 
estoppel  by  deed,  the  document  must  be  produced  or  other- 
wise proved  according  to  the  rules  of  evidence  applicable  to 
such  cases ;  and  where  it  depends  upon  estoppel  by  record, 
or  res  jvdicata,  the  record  must  be  proved  in  accordance 
with  the  laws  governing  such  evidence. 

§  534  The  twenty-seventh  defence  seldom  requires  any 
evidence  to  sustain  it,  because  the  Federal  courts  take  ju- 
dicial notice  of  the  statutes  of  limitation ; '  and  because  the 
plaintiff's  pleadings  and  proofs,  when  taken  together,  will 
generally  show  when  the  infringement  sued  upon  was  com- 
mitted. But  if  the  plaintiff's  presentation  of  the  case  leaves 
the  latter  point  uncertain  to  such  an  extent  as  to  affect  the 
question  of  the  operation  of  a  statute  of  limitation,  the 
burden  is  then  cast  upon  the  defendant,  to  prove  that  part 
or  all  of  the  infringement  is  old  enough  to  be  barred  by  the 
statute  which  he  pleaded.2 

§  535.  Testimony  in  actions  at  law  for  infringements  of 
patents  may  always  be  taken  orally  in  open  court ;  and  it 
may  be  taken  by  depositions  in  writing  where  the  witness 
lives  more  than  one  hundred  miles  from  the  place  of  trial, 
or  when  he  is  bound  on  a  voyage  at  sea,  or  is  about  to  go 
out  of  the  United  States,-  or  out  of  the  judicial  district  in 
which  the  case  is  to  be  tried,  or  to  a  greater  distance  than 
one  hundred  miles  from  the  place  of  trial,  before  the  time 
of  trial ;  or  when  he  is  ancient  and  infirm.  The  sorts  of 
magistrates  before  whom  such  a  deposition  may  be  taken, 
are  judges  of  any  United  States  court;  judges  of  any 
supreme,  superior,  or  county  court,  or  court  of  common 
pleas  of  any  of  the  United  States ;  commissioners  of  United  ' 
States  circuit  courts  ;  clerks  of  United  States  circuit  or  dis- 
trict courts ;  mayors  or  chief  magistrates  of  cities ;  and 
notaries  public.  If  any  such  magistrate  is  counsel  or  at- 
torney for  either  party,  or  interested  in  the  event  of  the 


1  Pennington  «.  Gibson,  16  How-         *  Russell  v.  Barney,  6  McLean, 
ard,  79,  1853 ;  Cheever  v.  Wilson,  9      577,  1855. 
Wallace,  121,  1869. 


396  ACTIONS  AT  LAW.  [CHAP.  XVIII. 

cause,  he  is  disqualified  from  acting.  Before  such  a  depo- 
sition is  taken,  reasonable  notice  thereof  must  be  given  in 
writing  by  the  party  intending  to  take  it,  or  his  attorney  of 
record,  to  the  opposite  party,  or  his  attorney  of  record,  as 
either  may  be  nearest,  and  that  notice  must  state  the  name 
of  the  witness,  and  the  time  and  place  of  taking  the  deposi- 
tion.1 The  formalities  to  be  observed  in  taking  and  trans- 
mitting such  depositions  are  prescribed  in  Sections  864  and 
865  of  the  Eevised  Statutes ;  and  they  must  be  strictly  com- 
plied with,  in  order  to  make  such  depositions  admissible  as 
against  proper  objections.  Indeed,  no  such  deposition  is 
admissible  in  any  event,  unless  it  appears  to  the  satisfac- 
tion of  the  court,  that  the  witness  is  dead,  or  gone  out  of 
the  United  States,  or  to  a  greater  distance  than  one  hundred 
miles  from  the  place  where  the  court  is  sitting,  or  that,  by 
reason  of  age,  sickness,  bodily  infirmity,  or  imprisonment, 
he  is  unable  to  travel  and  appear  at  court.2  Where  the 
witness  testified  in  his  deposition  to  the  then  existence  of 
the  fact  which  authorized  its  taking,  that  fact  is  presumed 
to  exist  at  the  time  the  deposition  is  offered  in  evidence, 
and  in  the  absence  of  contrary  proof,  the  deposition  itself 
will  satisfy  the  court  that  it  is  entitled  to  be  admitted. 

Most  objections  to  depositions,  in  order  to  be  efficacious, 
must  be  made  before  the  depositions  are  received  in  evi- 
dence ;  for  when  introduced  with  the  acquiescence  of  the 
opposite  party,  they  cannot  afterward  be  excluded  on  the 
ground  that  they  were  not  taken  in  accordance  with  the 
rules  prescribed  therefor.3  But  where  evidence  is  pertinent 
to  either  of  several  possible  defences,  one  or  more  of  which 
were  pleaded,  and  one  or  more  of  which  were  not  pleaded 
by  the  defendant,  the  fact  that  the  evidence  was  not  ob- 
jected to  when  taken  or  admitted,  does  not  make  it  admis- 
sible in  support  of  any  defence  which  was  not  pleaded.4 

§  536.  The  judge  may  direct  the  jury  to  return  a  verdict 


1  Revised  Statutes,  Section  863.          453,  1822. 

2  Revised  Statutes,  Section  865.  4  Zane  v.  Soffe,  5  Bann.  &  Ard. 

3  Evans  v.  Hettich,   7  Wheaton,      284,  1880. 


CHAP.  XVIII.]  ACTIONS   AT   LAW.  397 

for  the  defendant,  where  it  is  entirely  clear  that  the  plaintiff 
cannot  recover,  but  not  otherwise.1 

§  537.  Instructions  to  juries  embody  all  the  law  that  is 
applicable  to  the  material  facts  in  evidence.  In  ascertain- 
ing that  law,  the  judges  resort  to  the  statutes  of  the  United 
States,  and  to  the  decisions  of  the  United  States  Supreme 
Court;  and  where  further  information  is  required,  they 
examine  or  call  to  mind  the  decisions  of  the  Circuit  Courts 
of  the  United  States,  for  they  are  inferior  in  authority  to 
those  of  the  Supreme  Court  alone ; *  but  the  points  of  pat- 
ent law  which  are  developed  in  Circuit  Court  decisions,  are 
finally  established  only  when  determined  by  the  Supreme 
Court,  upon  review  in  that  tribunal.3  And  judges  are  not 
bound  to  conform  their  instructions  to  any  statements  of 
law  contained  in  any  opinion  of  any  court,  unless  that  state- 
ment was  strictly  applicable  to  the  case  then  before  the 
court  which  made  it.4  The  Supreme  Court  has  sometimes 
decided  cases,  after  full  argument,  quite  contrary  to  its 
own  previous  obiter  dicta;  and  the  circuit  court  decisions 
contain  hundreds  of  passing  remarks  which  cannot  be 
harmonized  with  the  positive  decisions  of  the  supreme 
tribunal.  The  opinions  of  the  best  text-writers  are  some- 
times more  likely  to  be  followed  by  the  Federal  courts, 
than  are  the  dicta  of  the  judges  of  those  courts,  because  the 
best  legal  authors  consider  their  writings  more  carefully 
than  the  judges  appear  to  consider  their  dicta,  and  because 
neither  of  these  kinds  of  statements  have  any  more  weight 
than  the  reasons  upon  which  they  are  respectively  based. 

Instructions  should  not  embody  the  opinions  of  the  judges 
on  any  issue  of  fact."  To  guard  against  the  observed  ten- 
dency in  judges  to  overlook  this  rule  in  patent  cases,  it  is 
prudent  to  require  all  instructions  to  be  given  in  writing, 

1  Klein  «.  Russell,  19  Wallace,  463,  717,  1887. 

1873 ;  Keyes  v.  Grant,  118  U.  S.  25,  4  Day  «.  Rubber  Co.  20  Howard, 

1886.  216, 1857  ;  Day  v.  Stellman,  1  Fisher, 

s  Washburn  «.   Gould,   3   Story,  487,  1859. 

157,  1844 ;  Schillinger  «.  Cranford,  5  Turrill  v.  Railroad  Co.   1  Wal- 

37  Off.  Gaz.  1350,  1886.  lace,  491.  1863. 

3  Andrews  v.  Hovey,    124  U.    S. 


398  ACTIONS   AT   LAW.  [CHAP.  XVIII. 

that  being  a  requirement  which  counsel  have  a  right  to 
make  in  the  State  courts  of  most  or  of  all  of  the  States,  and 
that  being  a  point  of  practice  which  is  consistent  with  the 
nature  of  an  action  of  trespass  on  the  case,  and  therefore 
one  to  be  followed  in  patent  actions  in  the  Federal  courts.1 
The  danger  of  irregularity  in  instructions  is  much  lessened 
by  putting  them  in  writing ;  and  the  facilities  for  correct- 
ing such  as  do  occur  are  materially  increased  thereby. 
While  he  is  bound  not  to  tell  the  jury  how  to  decide  any 
issue  of  fact,  the  judge  will  tell  them  what  issues  of  fact 
they  are  to  decide,  and  those  are  the  issues  in  the  plead- 
ings, and  not  some  other  issue  which  the  judge  may  think 
is  the  one  upon  which  the  merits  of  the  case  really  depend.2 

§  538.  The  verdict  in  a  patent  action  will  be  for  the  plain- 
tiff, if  every  defence  except  non-infringement  fails,  and  if 
that  fails  as  to  any  one  claim  of  the  letters  patent.3  So  also, 
the  plaintiff  is  entitled  to  a  verdict,  where  every  defence  fails 
except  the  sixteenth  and  seventeenth,  and  where  those 
defences  lack  application  to  one  or  more  of  the  claims  shown 
to  have  been  violated.4  And  he  is  also  entitled  to  a  verdict 
where  the  only  successful  defence  is  the  eighteenth,  if  his 
action  is  based  partly  on  the  first  term  of  the  patent,  and  if 
that  term  is  proved  to  have  been  infringed  by  the  defendant. 
So  also,  if  the  twenty-second,  twenty-third,  or  twenty-fourth 
defence  is  the  only  successful  one,  and  if  that  is  successful 
only  as  to  part  of  the  alleged  infringement,  the  plaintiff  will 
be  entitled  to  a  verdict  as  to  the  residue  ;  and  the  same  thing 
may  be  true  of  the  twenty-sixth  or  of  the  twenty-seventh 
defence. 

§  539.  A  new  trial  may  be  obtained  by  the  defeated  party, 
if  the  jury  disregarded  the  instructions  of  the  judge ; 5  or 


1  Revised  Statutes,   Sections  914  4  Gage  ®.  Herring,  107  U.  S.  640, 
and  4919.  1882  ;  Gould  v.  Spicer,  15  Fed.  Rep. 

2  Grant   v.   Raymond,   6   Peters,  344,  1882 ;  Cote  v.  Moffitt,  15  Fed. 
244,  1832.  Rep.  345,  1883. 

3  Waterbury  Brass    Co.   v.   New  5  Tucker  ».  Spalding,  13  Wallace, 
York  Brass  Co.  3  Fisher,  43,  1858.  453,  1881. 


CHAP.  XVIII.]  ACTIONS   AT  LAW.  399 

failed  to  correctly  apply  them  to  the  issues  of  the  case ; ' 
but  not  where  the  only  error  complained  of  is  an  alleged 
wrong  decision  of  such  an  issue,  unless  it  was  decidedly 
against  the  weight  of  evidence.* 

Excessive  assessment  of  damages,  even  where  it  is  undeni- 
ably so,  does  not  always  entitle  the  defendant  to  a  new  trial. 
Such  an  error  may  be  cured  by  the  plaintiff  remitting  such 
a  sum  as  the  judge  thinks  constitutes  the  excess,  in  all  cases 
where  he  thinks  that  the  error  of  the  jury  arose  from  inad- 
vertence ;  but  when  the  circumstances  of  the  case  clearly 
indicate  that  the  error  arose  from  prejudice,  or  from  reck- 
less disregard  of  duty,  on  the  part  of  the  jury,  a  new  trial 
will  be  granted.3  But  no  excessive  verdict  can  be  corrected 
by  the  Supreme  Court,  unless  the  nisiprius  judge  made  some 
error  which  entitles  the  defeated  party  to  a  venire  facias  de 
novo* 

Errors  made  by  judges  may  also  entitle  a  party  to  a  new 
trial,  but  no  such  error  will  have  that  effect  unless  it  was 
excepted  to  at  the  time  it  was  committed  ;  nor  where  it  con- 
sisted in  erroneous  admission  of  evidence,  which  the  sub- 
sequent course  of  the  trial  rendered  nugatory.6  So  also, 
where  the  error  of  the  judge  consisted  in  erroneous  instruc- 
tions relevant  to  damages,  the  plaintiff  may  avoid  a  new 
trial  by  consenting  that  the  verdict  be  reduced  to  nominal 
damages  and  costs.* 

Newly  discovered  evidence  may  also  furnish  a  good 
ground  for  granting  a  new  trial ;  but  not  where  that  evi- 
dence might,  with  due  diligence,  have  been  obtained  before 

'Johnson  «.   Root,   2  Clif.   108,  3  Stafford  r>.  Hair-Cloth  Co.  2  Clif. 

1862.  83,  1862;    Johnson  v.  Root.  2  Clif. 

*Alden  v.  Dewey,  1  Story,  336,  108,1862;  Russell  t.  Place,  9  Blatch. 

1840 ;  Stimpson  v.  Railroads,  1  Wai-  175,  1871. 

lace,  Jr.  164,  1847;  Allen  v.  Blunt,  *  Hogg  v.  Emerson,  11  Howard, 

2  Woodbury  &  Minot,  121,  1846;  607,  1850. 

Aiken    v.    Bemis,   3  Woodbury  &  B  Allen  v.  Blunt,  2  Woodbury  & 

Minot,  348,  1847;  Wilson  v.  Janes,  Minot,  121,  1846. 

3  Blatch.  227,  1854;  Bray  v.  Harts-  •  Cowing  v.  Rumsey,  8  Blatch.  36, 
horn,  1   Clif.  538,  1860;    Roberts  *.  1870. 

Schuyler,  12  Blatch.  448,  1875. 


400  ACTIONS   AT   LAW.  [CHAP.  XVIII. 

the  former  trial,1  nor  where  it  is  merely  cumulative.2  But 
evidence  is  not  merely  cumulative,  where  it  refers  to  facts 
not  before  agitated,  though  it  may  refer  to  defences  which, 
in  the  former  trial,  were  based  on  other  facts.3  A  party 
moving  for  a  new  trial  upon  the  ground  of  alleged  newly 
discovered  evidence,  must  succeed  or  fail  on  the  strength  or 
weakness  of  the  case  as  it  is  disclosed  in  his  affidavits,  and 
in  the  answering  affidavits  of  the  other  party  ;  for  the  moving 
party  is  not  permitted  to  rebut  the  latter  ;  nor  will  he  be 
entitled  to  a  new  trial,  if  the  opposing  affidavits  make  out  a 
strong  case  against  him.4  When  a  new  trial  is  granted  on 
the  ground  of  newly  discovered  evidence,  the  terms  usually 
are,  that  the  costs  of  the  former  trial  must  first  be  paid  by 
the  applicant.5 

§  540.  Trials  by  a  judge  without  a  jury  require  to  be  so 
managed  that  the  issues  of  law  and  the  issues  of  fact  are 
kept  entirely  distinct  ;  for  his  decisions  on  the  former  are 
reviewable  by  the  Supreme  Court,  while  his  finding  of  fact 
has  the  same  operation  as  the  verdict  of  a  jury.6  If  the 
finding  of  the  judge  be  a  general  one,  it  is  conclusive  on  all 
issues  of  fact,  and  is  also  conclusive  on  all  questions  of  law, 
except  those  which  arise  upon  the  pleadings,  and  those 
which  the  bill  of  excerptions  specifically  presents  as  having 
been  ruled  upon  and  excepted  to  in  the  progress  of  the  trial.7 
If  the  finding  of  the  judge  be  a  special  one,  it  will  still  be 
conclusive  on  the  facts  found  ;  but  the  sufficiency  of  those 
facts  to  support  the  judgment  will  be  open  to  review  in  the 
Supreme  Court.8  Where  the  judge  simply  finds  for  the 
defendant,  and  enters  a  judgment  accordingly,  that  judg- 
ment can  be  taken  to  the  Supreme  Court  for  review,  only 
in  the  regular  common  law  method  of  a  bill  of  exceptions 


1  Washburn  v.  Gould,  3  Story,  122.  1833. 
1844.  5  Aiken  v.  Bemis,  3  Woodbury  & 

4  Ames  0.  Howard,  1  Sumner,  482,  Minot,  358,  1847. 
1833.  6  Revised  Statutes,  Section  649. 

8  Aiken  v.  Bemis,  3  Woodbury  &         '  Insurance  Co.  v.  Sea,  21  Wallace, 

Minot,  358,  1847.  160,  1874. 

4  Ames  v.  Howard,  1  Sumner,  491,          8  Revised  Statutes,  Section  700.  " 


CHAP.  XVIII.]  ACTIONS   AT   LAAV.  401 

and  a  writ  of  error,  and  only  on  pure  questions  of  law.' 
Where  the  judge  finds  as  a  fact,  that  the  patent  is  void  for 
want  of  novelty,  or  that  the  defendant  has  not  infringed  it, 
and  thereupon  enters  a  judgment  for  the  latter,  it  is  undeni- 
able that  the  fact  so  found  is  sufficient  to  support  that  judg- 
ment. In  arriving  at  his  opinion,  the  judge  may  have  mis- 
understood or  misapplied  the  tests  of  novelty,  or  of  infringe- 
ment, but  still  his  finding  is  conclusive ;  because  the 
Supreme  Court  is  authorized  to  examine  nothing  but  the 
sufficiency  of  the  facts  found.1  But  if  the  judge  finds  that 
A.  B.  invented,  made,  and  used  a  certain  described  thing  in 
the  United  States,  prior  to  the  invention  of  the  patentee,  or 
that  the  defendant  made,  used,  or  sold  only  a  certain 
described  thing  during  the  life  of  the  patent,  and  therefore 
renders  a  judgment  for  the  defendant ;  that  judgment  will 
be  reversed  by  the  Supreme  Court  on  a  writ  of  error,  if  that 
court  is  of  opinion  that  the  thing  invented,  made,  and  used 
by  A.  B.  did  not  negative  the  novelty  of  the  patent,  or  is  of 
opinion  that  the  thing  made,  used,  or  sold  by  the  defendant 
did  really  infringe  the  patent  in  suit.3  These  illustrations 
of  the  practice  in  trials  by  a  judge  without  the  aid  of  a  jury, 
show  that  where  special  findings  of  facts  are  adopted  as 
the  method  of  laying  a  foundation  for  a  review  of  the  case 
by  the  Supreme  Court,  the  finding  ought  to  relate  to  the 
fundamental  facts  of  the  case,  and  not  merely  the  conclusions 
of  fact  which  are  deducible  therefrom. 

§  541.  Trial  by  referee  may  be  instituted  by  an  entry  of 
the  clerk  of  the  court,  made  at  the  request  of  the  parties, 
simply  indicating  that  the  case  is  to  be  referred  to  the  per- 
son or  persons  named,  as  referee ;  or  it  may  be  ordained  by 
a  stipulation  in  writing,  signed  by  the  parties  or  their  at- 
torneys and  filed  in  the  case.  When  that  is  done,  a  rule 
may  be  issued,  or  an  order  of  court  may  be  entered,  refer- 


1  Revised  Statutes,   Sections  649  3  French  v.  Edwards,  21  Wallace, 

and  700.  147,  1874 ;  Insurance  Co.  t>.  Sea,  21 

1  Jennisons  v.  Leonard,  21  Wai-  Wallace,  160,  1874. 
lace,  307, 1874. 


ACTIONS   AT   LAW.  [CHAP.  XVIII. 

ring  the  case  to  the  referee  indicated  by  the  parties,  and 
directing  him  to  hear  and  determine  all  the  issues  thereof. 
It  thereupon  becomes  the  duty  of  the  referee  to  hear  the 
parties,  and  then  to  decide  the  controversy  and  make  a  re- 
port to  the  court;  The  report  may  be  special,  setting  forth 
the  details  of  the  evidence  upon  which  it  is  based,  or  it  may 
be  general,  giving  only  the  conclusions  to  which  that  evidence 
carried  the  mind  of  the  referee.  To  that  report,  either  party 
may  except  in  writing,  and  upon  the  hearing  of  those  ex- 
ceptions, the  court  may  adopt  or  reject  the  report  and  enter 
judgment  accordingly,  or  it  may  recommit  the  report  to  the 
referee  with  further  directions.1 

Such  is  substantially  the  outline  of  the  trial  by  referee, 
which  is  delineated  in  the  decision  just  cited.  Inasmuch 
as  that  form  of  trial  is  not  provided  for  by  any  United 
States  statute,  its  details  are  regulated  by  the  laws  of  the 
particular  State  in  which  such  a  trial  is  had.2  Recourse 
must  therefore  be  had  to  those  laws  for  sundry  points  of 
information  relevant  to  the  methods  of  taking  testimony 
before  referees ;  the  time  when  referees'  reports  must  be 
made  ;  the  weight  attached  to  such  reports  on  issues  of 
fact ;  and  the  proper  practice  by  means  of  which  to  secure 
the  judgment  of  the  court  upon  reviewable  points. 

§  542.  Judgments  follow  verdicts  of  juries,  findings  of 
judges,  or  reports  of  referees  ;  unless  those  verdicts  are  set 
aside,  those  findings  reconsidered  and  modified,  or  those 
reports  rejected  or  recommitted.  It  is  not  the  practice  of 
the  United  States  Circuit  Courts,  to  require  a  rule  for  a 
judgment  to  be  entered  in  any  case.  Judgments  are  en- 
tered by  the  clerk  of  the  court  under  a  special  or  general 
authority  from  the  judge,  and  where  so  entered  are  binding 
as  the  act  of  the  court.3  The  circumstances  which  justify 
courts  in  entering  judgments  in  patent  cases,  for  any  sum 
above  the  amount  of  the  verdict,  finding,  or  report,  but  not 


1  Heckers  v.  Fowler,'  2  Wallace,      and  914. 

132,  1864.  a  Heckers  v.  Fowler,  2  Wallace, 

1  Revised  Statutes,   Sections  721      132,  18G4. 


CHAP.  XVIII.]  ACTIONS  AT   LAW.  403 

exceeding  three  times  the  amount  thereof,  are  explained  in 
the  chapter  on  damages.  That  the  court  has  the  same 
power  in  this  particular,  in  cases  where  the  damages  are 
ascertained  by  the  finding  of  the  judge,  or  by  the  report  of 
a  referee,  that  it  has  in  cases  where  they  are  ascertained  by 
the  verdict  of  a  jury,  is  a  point  which  has  not  been  judi- 
cially decided,  but  is  one  which  can  hardly  be  doubted. 

§  543.  Costs  are  recoverable  by  all  plaintiffs  who  secure 
judgments  for  infringements  of  patents ; '  except  where  it 
appears  on  the  trial  that  one  or  more  of  the  claims  of  the 
letters  patent  are  void  for  lack  of  being  the  subject  of  a 
patent,  or  for  want  of  invention,  or  for  want  of  novelty,  and 
does  not  appear  that  the  proper  disclaimer  was  filed  in  the 
Patent  Office  before  the  commencement  of  the  action;1 
and  except  where  part  of  the  patents  sued  upon  are  not  re- 
covered upon.3  There  is  no  United  States  statute  which 
provides  that  defendants  shall  recover  costs  in  any  patent 
case.  The  common  law  of  England  allowed  no  costs  to 
either  party  in  any  action  at  law ; 4  and  the  statutes  of 
Gloucester,5  which  supplied  that  defect  as  to  plaintiffs,  did 
not  supply  it  as  to  defendants.  The  statute  of  23  Henry 
VIII.,  Chapter  15,  enacted,  however,  that  where,  in  actions 
on  the  case,  the  plaintiff  is  nonsuited  after  the  appearance 
of  the  defendant ;  or  where  the  verdict  happens  to  pass,  by 
lawful  trial,  against  the  plaintiff,  the  defendant  shall  have 
judgment  to  recover  his  costs  against  the  plaintiff,  and  shall 
have  such  process  and  execution  for  the  recovery  of  the 
same,  as  the  plaintiff  might  have  had  against  the  defendant, 
in  case  the  judgment  had  been  given  for  the  plaintiff.  This 
statute  of  Henry  VIII.  having  been  enacted  before  the 

1  Revised  Statutes,  Section  4919;  Car  Co.   84  Fed.   Rep.   180,   1888; 

Merchant    v.  Lewis,    1   Bond,    172,  Ligowski  Clay  Pigeon  Co.  «.  Clay 

1857.  Bird  Co.  34  Fed.   Rep.  828,  1888; 

4  Revised  Statutes,  Sections  973,  National  Machine  Co.  v.  Brown,  86 

4917,  and  4922.  Fed.  Rep.  822,  1888;  Schmid  v.  Mfg. 

3  Adams  v.  Howard,  19  Fed.  Rep.  Co.  37  Fed.  Rep.  348,  1889. 

819,  1884;  Albany  Steam  Trap  Co.  4  Day  «.  Woodworth,  13  Howard, 

v.    Felthousen,   20  Fed.    Rep.   640,  372,  1851. 

1884;  Mann's  Car  Co.   v.   Monarch  8  6  Edward  I.  Chapter  1. 1278. 


404  ACTIONS   AT   LAW.  [CHAP.   XVIII. 

founding  of  the  English  colonies  in  America,  and  being 
suited  to  the  condition  of  society  in  the  United  States,  is  in 
force  in  the  United  States  courts  to  the  same  extent  that  it 
would  be,  if  it  were  one  of  the  rules  of  the  common  law.' 

§  544.  All  the  items  of  costs  which  are  taxable  in  the 
United  States  courts  are  specified  in  the  United  States 
statutes.2  The  province  of  a  taxing  officer  is  therefore  lim- 
ited to  comparing  suggested  items  with  the  particulars  of 
those  statutes,  and  to  taxing  those,  and  only  those,  which 
he  finds  enumerated  therein.3  And  no  expenses,  other 
than  taxable  costs,  can  be  lawfully  inserted  in  any  cost 
bill.  On  most  points,  the  statutes  relevant  to  fees  are  so 
clear  that  they  require  no  explanation ;  but  in  some  partic- 
ulars, they  needed  and  have  received  judicial  construction. 
Several  such  cases  may  be  conveniently  explained  in  a  few 
of  the  sections  which  immediately  follow. 

§  545.  One  attorney's  docket  fee  is  taxable  in  each  case 
against  the  defeated  party.6  There  is  no  warrant  for  taxing 
the  unsuccessful  party  with  a  separate  docket  fee  for  each 
of  his  adversary's  attorneys,  nor  with  a  separate  docket  fee 
for  each  term  during  which  a  case  has  been  pending  in 
court,  nor  for  taxing  any  docket  fee  in  favor  of  any  attorney 
of  the  defeated  party.  Neither  is  there  any  warrant  for 
taxing  an  attorney's  deposition  fee  in  favor  of  any  attorney 
of  the  beaten  party,  or  in  favor  of  more  than  one  attorney 
of  the  party  which  prevails  in  the  action.6  And  taxable 
attorney's  fees  are  taxed  in  favor  of  clients  to  help  them  pay 
their  attorneys,  and  not  in  favor  of  attorneys  as  extra  com- 
pensation.7 

1  Hathaway  «.  Roach,  2  Wood-         4  Parks  v.  Booth,  102  U.  S.  106, 
bury  &  Minot,  69,  1846;  Bunker  v.       1880. 

Stevens,  26  Fed.  Rep.  249,  1885.  5  Dedekam  v.  Vose,  3  Blatch.  153, 

2  Revised  Statutes,  823,  983;  The  1853;  Troy  Iron  &  Nail  Factory  v. 
Baltimore,    8    Wallace,   392,    1869;  Corning,  7  Blatch.  17,  1869;  Parker 
Lyell    v.   Miller,    6   McLean,    422,  «.  Bigler,  1  Fisher,  285,  1857. 

1855 ;  Wooster  t>.   Handy,   23  Fed.  6  Revised  Statutes,  Section  824. 

Rep.  60,  1885.  »  Celluloid  Mfg.  Co.  «.  Chandler, 

3  Dedekam  v.  Vose,  3  Blatch.  153,  27  Fed.  Rep.  9,  1886. 
1853. 


CHAP.   XV1I1.]  ACTIONS   AT   LAW.  405 

§  546.  The  fees  of  the  clerk  of  the  court  are  in  general 
taxable  against  the  defeated  party  ;  but  several  of  the  items 
to  which  he  is  entitled,  are  not  so  taxable,  but  are  to  be  paid 
by  the  party  for  which  he  rendered  the  services  to  which 
they  refer.  Among  these  items,  are  copies  of  the  record 
ordered  by  a  party  for  his  own  use.1  As  the  greater  must 
include  the  less,  this  rule  must  apply  also  to  copies  of 
pleadings,  depositions  or  other  papers  which  form  parts  of 
the  records  of  cases.  The  extent  to  which  clerks  may  make 
records,  and  charge  defeated  parties  therefor,  depends 
upon  the  rules  of  each  particular  court.  In  some  districts, 
those  rules  appear  to  be  made  with  a  view  to  giving  the 
clerks  as  much  scope  in  this  respect  as  can  be  supported 
by  any  argument ;  while  in  other  courts,  the  practice  is  to 
charge  parties  with  no  more  recording  than  the  reasonable 
requirement  of  each  case  seems  to  demand. 

§  547.  The  fees  of  a  commissioner  or  other  magistrate, 
who  takes  a  deposition  in  a  case,  are  generally  taxable 
against  the  defeated  party,*  but  if  the  deposition  is  not  of- 
fered in  evidence  at  the  trial,  those  fees  cannot  be  so  taxed.8 
And  reasoning  by  analogy  from  the  taxation  of  attorneys' 
deposition  fees,  it  should  follow  that  magistrates'  fees  are 
not  taxable  on  depositions  which  are  offered  in  evidence, 
but  are  not  admitted.4 

§  548.  Witness  fees  are  generally  taxable  against  the  de- 
feated party,  whether  the  testimony  was  given  orally  in 
court  or  by  deposition  before  a  magistrate."  But  they  are 
not  so  taxable  when  the  testimony  is  taken  by  deposition 
and  the  deposition  is  not  offered/  or  if  offered  is  not  ad- 
mitted in  evidence.7  Nor  will  a  defeated  party  be  taxed 
with  the  fees  of  more  than  three  witnesses  to  one  fact,  un- 
less the  prevailing  party  satisfies  the  court  by  affidavit,  that 

1  Caldwell  v.  Jackson,  7  Cranch,          4  Revised  Statutes,  Section  824. 
277,  1812.  8  Revised  Statutes,  Section  848. 

2 'Fry  v.  Yeaton,  1  Cranch 's  Cir-         •  Hathaway  «.   Roach,   2  Wood- 

cuit  Court  Reports,  550,  1809.  bury  &  Minot,  63,  1846. 

3  Hathaway  «.  Roach,   2  Wood-         7  Section  547  of  this  book, 
bury  &  Miuot,  75,  1846. 


406  ACTIONS   AT    LAW.  [CHAP.  XVIII. 

the  additional  witnesses  were  really  necessary  to  ade- 
quately support  his  contention  on  that  point.1 

Whether  any  defeated  party  is  taxable  with  the  fees  of 
any  witness  who  testified  on  request,  and  without  a  subpoena, 
is  an  unsettled  question.  It  has  been  held  in  the  affirm- 
ative by  Judge  WOODRUFF  2  and  Judge  HALL/  and  in  the 
negative  by  Justice  McLEAN/  Judge  SAWYER/  and  Judge 
LEAVITT/  The  ablest  arguments  on  the  two  sides  of  the 
issue  are  those  of  Judge  WOODRUFF  and  Judge  SAWYER  ; 
and  there  is  probably  nothing  to  be  said  on  the  subject, 
that  is  not  said  in  one  or  the  other  of  the  five  cases  cited. 
If  it  is  necessary,  in  order  to  make  witness  fees  taxable, 
that  the  witness  should  be  served  with  a  subpoena,  it  is 
not  necessary  that  he  should  be  so  served  by  any  officer. 
Service  by  a  private  person  is  sufficient.7 

Witness  fees  are  taxable  in  favor  of  a  defendant,  though 
his  witnesses  are  not  examined,  because  the  action  is  not 
prosecuted  ;  and  where  witnesses  attend  more  than  once  at 
the  same  term,  because  of  a  stipulated  postponement  of  the 
trial;  their  fees  are  to  be  taxed  as  for  continuous  attendance 
during  the  interim,  and  not  as  for  repeated  journeys  from 
their  homes.8  Witnesses  from  a  distance  are  entitled  to 
fees  for  Sunday,  where  they  are  detained  over  that  day.9 

§  549.  The  taxation  of  costs  may  properly  be  made  at 
the  time  the  judgment  is  entered,  and  that  is  the  course 
which  best  secures  the  rights  of  the  parties.  But  a  blank 
may  be  left  in  the  judgment  for  that  purpose,  and  may  be 
filled  by  a  taxation  made  nunc  pro  tune,  after  the  judgment 
has  been  affirmed  by  the  Supreme  Court.10  Where  the 

1  Bussard  v.  Catalino,  2  Cranch's  *  Woodruff  v.  Barney,  2  Fisher, 
Circuit  Court  Reports,  421,  1823.  244, 1862. 

2  Dennis  «.  Eddy,  12  Blatch.  196,  '  Power  v.  Semmes,  1   Cranch's 
1874.  Circuit  Court  Reports,  247,  1805. 

3  Cummings    v.     Plaster    Co.    6  8  Hathaway  ®.    Roach,    2  Wood- 
Blatch.  510,  1869.  bury  &  Minot,.63,  1846. 

4  Dreskill  v.   Parish,  5  McLean,  9  Schott  v.  Benson,  1  Blatch.  564, 
213,  1851.  1850. 

5  Spaulding  v.  Tucker,  4  Fisher,  10  Sizer  v.  Many,  16  Howard,  98, 
637,  1871.  1853. 


CHAP.  XVIII.]  ACTIONS  AT   LAW.  407 

former  practice  is  followed,  the  legality  of  the  taxation  may 
probably  be  reviewed  by  the  Supreme  Court,  if  the  case  is 
taken  to  that  forum  by  the  defendant,  to  secure  a  reversal 
of  a  judgment  against  him  for  substantial  damages  as  well 
as  costs,  and  if  the  court  affirms  or  modifies  the  judgment 
as  to  the  damages.1  But  where  only  nominal  damages  and 
costs  are  adjudged  against  a  defendant,  he  cannot  take  the 
case  to  the  Supreme  Court  for  the  purpose  of  securing  a 
reversal  of  the  judgment  or  a  diminution  of  the  costs." 
Where  a  judgment  for  costs  is  entered  against  a  plaintiff  on 
the  basis  of  a  verdict  for  the  defendant,  the  plaintiff  may 
go  to  the  Supreme  Court  on  a  writ  of  error.  If  he  secures 
a  reversal  of  the  judgment  for  errors  on  the  trial,  there  will 
be  no  occasion  for  the  court  to  consider  the  correctness  of 
the  taxation  of  costs.  If,  on  the  other  hand,  the  court  finds 
no  error  upon  which  to  ground  a  reversal,  it  will  seek  for 
no  error  in  the  taxation.3 

The  clerks  of  the  Circuit  Courts  are  the  primary  taxing 
officers  of  those  tribunals ;  but  they  perform  that  duty 
under  the  general  or  particular  direction  of  the  judges. 
The  taxation  of  costs  is  ordinarily  made  by  the  clerk,  on  his 
own  motion,  or  at  the  request  of  the  prevailing  party,  and 
without  notice  to  the  defeated  party.  If  the  latter  is  dis- 
satisfied with  the  result,  the  court  will  hear  his  motion  for 
a  retaxation.  If  such  a  motion  is  accompanied  with  an  ex- 
planation showing  colorable  ground  for  a  claim  of  error  in 
the  taxation,  the  court  will  order  the  clerk  to  refax  the 
costs,  upon  the  mover  giving  the  opposite  party  due  notice 
of  the  time  and  place  thereof,  and  paying  the  costs  occa- 
sioned thereby.4  Then,  if  either  party  is  dissatisfied  with 
the  result  of  the  retaxation,  he  may  appeal  to  the  court ; 
but  as  a  foundation  for  the  hearing  of  such  an  appeal,  he 


1  Parks  v.  Booth,  102  U.  S.  106,  *  Canter  «.  Insurance  Companies, 

1880.  3  Peters,  318,  1830. 

*  Elastic  Fabric  Co.  v.  Smith,  100  4  Collins    T.    Hathaway,  Olcott's 

U.  S.  110,  1879;  Paper-Bag  Cases,  Reports,  182,  1845. 
105  U.  S.  772,  1881. 


408  ACTIONS   AT    LAW.  [CHAP.   XVIII. 

must  secure  from  the  clerk  an  itemized  bill  of  the  charges 
to  which  he  objects ; '  and  as  a  foundation  for  success  on 
that  hearing,  must  show  that  part  or  all  of  those  items  are 
unwarranted  by  the  statute.  All  of  these  proceedings  must 
take  place  at  the  term  in  which  the  judgment  is  entered  ; a 
except  in  cases  where  blanks  for  costs  are  left  in  judgments, 
pending  writs  of  error  from  the  Supreme  Court. 

§  550.  A  writ  of  error,  properly  taken  out  from  the  office 
of  the  clerk  of  the  Supreme  Court,3  will  carry  any  action  at 
law,  for  an  infringement  of  a  patent,  to  the  Supreme  Court 
of  the  United  States  for  review,  regardless  of  the  amount 
of  damages  in  controversy  ; 4  and  whether  the  case  was 
tried  by  a  jury,  by  a  referee,  or  by  a  judge  alone.5  But  no 
writ  of  error  can  carry  any  question  of  fact  to  the  Supreme 
Court.6  The  sole  function  of  such  a  writ  is  to  secure  from 
that  tribunal  a  review  of  the  questions  of  law  involved  in  a 
case,  or,  where  the  finding  below  was  made  by  a  judge,  and 
was  special,  to  secure  a  review  of  the  question  whether  the 
facts  so  found  are  sufficient  to  support  the  judgment  based 
thereon.7 

§  551.  Bills  of  exception,  allowed  and  signed,  or  sealed 
by  the  judge,  constitute  the  only  mode  by  which  the  ques- 
tions of  law  that  arise  on  the  trial  of  a  case,  can  be  pre- 
pared for  transmission  to  the  Supreme  Court  in  pursuance 
of  a  writ  of  error."  But  a  paper  which  is  incorporated  in 
the  record,  and  which  has  all  the  substantial  characteristics 
of  a  bill  of  exceptions,  will  be  treated  as  such,  even  though 
it  is  not  so  entitled.9  Such  a  document  should  state  no 

1  Dedekain  v.  Vose,  3  Blatcb.  153,      1888. 

1853.  6  York  &  Cumberland    Railroad 

2  Blagrove  v  Ringgold,  2  Cranch's  Co.  v.  Myers,  18  Howard,  246,  1855; 
Circuit  Court  Reports,  407,  18'23.  Heckers  v.  Fowler,  2  Wallace,  128, 

3  West  «.  Barnes,  2  Dallas,  '401,  1864. 

1791.  6  Heckers  v.  Fowler,    2  Wallace, 

4  Revised    Statutes,    Section    699;      123,  1864. 

Philip  v.    Nock,    13  Wallace,    185,          '  Revised  Statutes,  Section  700. 
1871;    Dale  Mfg.  Co.  v.  Hyatt,  125          8  Insurance  Co.  ®.  Lanier,  95  U.  S. 

TJ.  S.  51,  1887;  Felix  ®.  Slmrnweber,  171,  1877. 

125  U.  S.  55,  1888;    St.  Paul  Plow          9  Herbert  v.  Butler,  97  U.  S.  319, 

Works  v.  Starling,  127  U.   S.  376,  1877. 


CHAP.  XVIII.]  ACTIONS   AT   LAW.  409 

more  of  the  case  than  is  necessary  to  present  the  questions 
which  are  reviewable  in  the  Supreme  Court,  and  which  the 
plaintiff  in  error  seeks  to  have  reviewed  there.1  If  those 
questions  relate  only  to  the  pleadings,  the  pleadings  only 
should  be  inserted  in  the  bill  of  exceptions.  Where  those 
questions  relate  only  to  the  competency  of  a  witness,  the 
bill  of  exceptions  need  only  show  that  the  witness  was 
offered,  and  was  accepted  or  rejected,  as  the  case  may  be, 
and  that  such  admission  or  rejection  was  duly  excepted  to, 
and,  in  case  of  a  rejection  of  a  witness  to  want  of  novelty, 
that  due  notice  of  the  fact,  to  be  proved  by  him,  was  served 
on  the  opposite  party ; 2  and  in  all  cases  of  rejection,  that 
the  testimony  which  the  witness  would  have  given,  was 
material  to  the  issue.  This  last  requisite  was  once  held 
by  the  Supreme  Court  to  be  unnecessary ;  *  but  that  tri- 
bunal afterward  decided,  that  to  render  an  exception  avail- 
able in  that  court,  it  must  affirmatively  appear  that  the 
ruling  excepted  to,  affected,  or  might  have  affected,  the  de- 
cision of  the  case.4  Accordingly,  in  the  case  last  cited,  the 
court  held  that  where  particular  answers  of  a  competent 
witness  were  excluded  by  the  court  below,  the  bill  of  ex- 
ceptions must  contain  those  answers,  and  must  show  that 
they  were  material  to  the  issues  ;  and  the  court  said  in  the 
same  case  that  where  particular  questions  are  excluded, 
and  therefore  not  answered,  the  bill  of  exceptions  must 
show  what  facts  the  party  offered  to  prove  by  means  of 
those  questions,  and  that  such  facts  were  material  to  the 
case.  And  in  a  still  later  case,  the  court  held,  that  where 
a  particular  question  was  objected  to,  but  was  admitted  and 
was  answered,  the  bill  of  exceptions  must  show  what  the 
answer  was,  in  order  to  enable  the  Supreme  Court  to  pass 
upon  the  propriety  of  the  evidence.* 

1  Hausknechte.  Clay  pool,  1  Black.  3  Vance  v.  Campbell,  1  Black.  427, 

431,  1861.  1861. 

*  Philadelphia  &  Trenton  Railroad  4  Railroad  Co.  v.  Smith,  21  Wai- 
Co.   ®.    Stimpson,    14    Peters.   448,  lace,  255,  1874. 
1840;  Blanchard  v.  Putnam,  8  Wai-  •  Lovell  v.  Davis,  101  U.   S.  542, 
lace,  420,  1869.  1879. 


410  ACTIONS   AT   LAW.  [CHAP.   XVIII. 

§  552.  Where  the  questions  which  are  sought  to  be 
brought  before  the  Supreme  Court,  relate  only  to  the  in- 
structions which  the  court  below  gave,  or  refused  to  give 
to  the  jury,  the  bill  of  exceptions  should  set  forth  the  issues 
of  the  pleadings,  and  the  substance  of  the  charge  or  refusal 
to  charge,  as  the  case  may  be,  together  with  whatever  part 
of  the  evidence  is  necessary  to  enable  the  Supreme  Court 
to  decide  upon  the  propriety,  or  impropriety,  of  the  action 
of  the  court  below.  The  issues  of  the  pleadings  should  be 
stated  in  the  bill  of  exceptions,  for  otherwise  the  appellate 
tribunal  cannot  know  whether  the  charge  or  refusal  to 
charge,  which  was  excepted  to,  was  material  to  the  case ; 
and  because  the  Supreme  Court  will  not  sit  to  try  moot 
issues  of  law,  nor  to  establish  legal  propositions  in  cases 
wherein  those  propositions  are  not  involved.1  The  sub- 
stance of  the  charge,  rather  than  the  charge  in  extenso, 
should  be  stated  in  the  bill,  because  the  Supreme  Court 
does  not  desire  to  be  occupied  in  listening  to  minute  criti- 
cisms and  observations  upon  expressions  incidentally  intro- 
duced into  a  charge  for  purposes  of  argument  or  illustra- 
tion, and  which,  if  they  were  the  direct  point  in  judg- 
ment, might  need  qualification,  but  which  do  not  show, 
that  upon  the  whole  the  relevant  law  was  not  justly  ex- 
pounded to  the  jury."  But  the  whole  substance  of  the 
charge  should  be  stated  where  nothing  but  charged  matter 
is  excepted  to  ;  because  if  part  is  -omitted,  the  Supreme 
Court  cannot  know  that  the  omitted  portion  did  not  cure 
the  faults  of  the  parts  inserted.  So  also,  where  the  mat- 
ter which  is  excepted  to  is  a  refusal  to  charge ;  not  only  the 
refused  instruction,  but  also  the  whole  substance  of  the 
given  charge,  should  be  inserted  in  the  bill  of  exceptions  ; 
for  otherwise  the  Supreme  Court  cannot  be  informed 
whether  the  refused  instruction  was  not  substantially  con- 
tained in  the  charge  which  was  actually  given  ;  and  because 
judges  are  never  bound  to  instruct  juries  in  the  form  re- 


1  Jones  D.  Buckell,  104  U.  S.  554,          -  Evans  v.  Eaton,  7  Wharton,  356 
1881.  1822. 


CHAP.  XVIII.]  ACTIONS   AT  LAW.  411 

quested,  provided  they  substantially  embody  the  whole  of 
the  relevant  law  in  the  charges  which  they  give.1  Where 
nothing  but  charged  matter  is  excepted  to,  the  bill  of  ex- 
ceptions should  not  contain  any  part  of  the  evidence ;  be- 
cause the  only  question  before  the  Supreme  Court  in  such 
a  case  is  the  correctness  of  the  charge.1  But  where  a  re- 
fusal to  charge  is  excepted  to,  the  bill  must  contain  the 
evidence  to  which  the  refused  instruction  relates,  or  must 
contain  a  statement  of  facts  pertinent  to  that  point,  and  a 
statement  that  evidence  was  introduced  tending  to  prove 
those  facts  ;  because  no  court  is  bound  to  give  any  charge 
which  does  not  relate  to  the  evidence,  no  matter  how  sound 
the  proposed  instruction  may  be,  as  a  proposition  of  law. 

§  553.  Specific  exceptions  must  be  made  to  instructions, 
in  order  to  entitle  the  objector  to  a  review  of  those  instruc- 
tions in  the  Supreme  Court.  Where  a  requested  instruc- 
tion is  refused,  and  the  refusal  is  excepted  to,  that  refusal 
will  be  sustained  by  the  Supreme  Court,  if  the  requested 
instruction  was  unsound  in  any  particular.*  Counsel  ought 
therefore  to  carefully  separate  their  propositions  of  law 
from  each  other,  when  framing  their  requests  for  instruc- 
tions, lest  one  erroneous  proposition  deprive  them  of  the 
benefit  of  several  sound  ones. 

§  554.  Exceptions  to  charges,  or  to  refusals  to  charge, 
must  be  made  and  noted  while  the  jury  is  at  the  bar.4  But 
bills  of  exception  may  be  drawn  up,  and  signed  or  sealed 
by  the  judge  at  any  time  before  the  expiration  of  the  term, 
unless  the  judge  enforces  some  rule  of  his  court,  which 
prescribes  a  shorter  time  for  the  preparation  and  presenta- 
tion of  such  documents  for  his  approval ;  and,  if  not  other- 
wise too  late,  such  bills  may  be  prepared  and  signed  after 
a  writ  of  error  has  been  sued  out  from  the  Supreme  Court 
to  transfer  the  case  to  that  tribunal.' 

1  Indianapolis  &  St.   Louis  Rail-  road  Co.  v.  Horst,  93  U.  S  295, 1876. 

road  Co.  «.  Horst,  93  U.  S.  295, 1876.  4  Phelps  v.   Mayer,   15   Howard, 

*  Pennockr.  Dialogue,  2  Peters,  1,  160,  1853. 

9.  *  Hunnicutt  e.  Peyton,  102  U.  8. 

Indianapolis  &  St.   Louis  Rail-  353,  1880. 


CHAPTEK  XIX. 


DAMAGES. 


555.  The  generic  measure  of  dam- 
ages. 

556.  Established  royalties  as  specific 
measures  of  damages. 

557.  Tests  applied  to  royalties,  on 
behalf  of  defendants. 

558.  Tests  applied  to  royalties  on 
behalf  of  plaintiffs. 

559.  Money  paid  for  infringement 
already  committed,  is  no  meas- 
ure  of    damages   in    another 
case. 

560.  Royalties  reserved  on  sales  of 
patents. 

561.  Royalties  for  licenses  to  make 
and  use,  and  royalties  for  li- 
censes to  make  and  sell. 


562.  Proportion  of  licensed  to  unli- 
censed practice  of  an  invention. 

563.  Measure  of  damages  in  the  ab- 
sence of  an  established  royalty. 

564.  Damages  for  unlicensed  mak- 
ing, without  unlicensed  selling 
or  using. 

565.  Evidence  of  damages. 

566.  Indirect    consequential    dam- 
ages. 

567.  Exemplary  damages. 

568.  Increased  damages. 

569.  Actual  damages  not  affected  by 
infringementbeing  unintended. 

570.  Counsel  fees  and  other  expen- 
ses. 

571.  Interest  on  damages. 


§  555.  THE  pecuniary  injury  which  a  plaintiff  incurs  by 
reason  of  a  defendant's  infringement  of  his  patent,  is  the 
generic  measure  of  the  damages  which  that  plaintiff  is  en- 
titled to  recover  on  account  of  that  infringement.1  Such  an 
injury  is  often  called  the  plaintiff's  loss,2  and  sometimes  it 
is  strictly  that,  but  often  it  is  a  loss  only  in  the  sense  that 
it  is  a  failure  to  acquire  a  just  and  deserved  gain.3  Whether 
the  injury  caused  to  a  plaintiff  by  an  infringement  was  a  loss 
in  one  or  the  other  of  these  senses,  its  magnitude  must 
always  be  ascertained,  in  order  to  ascertain  the  amount  of 


1  Goodyear  «.   Bishop,  2  Fisher, 
158.  1861  ;  Graham  v.  Mfg.  Co.  24 
Fed.  Rep.  643,  1881. 

2  Suffolk  Co.  v.  Hayden,  3  Wal- 
lace, 315, 18(55;  Cowing  v.  Rumsey,  8 


Blatch.  36, 1870;  McComba.  Brodie, 
1  Woods,  161,  1871  ;  La  Baw  «. 
Hawkins,  2  Bann.  &  Ard.  563,  1877. 
3  Hobbie  v.  Smith,  27  Fed.  Rep. 
662,  1886. 

412 


CHAP.  XIX.]  DAMAGES.  413' 

the  damages  which  he  is  entitled  to  recover.  The  amount 
of  the  profits  which  the  defendant  derived  from  his  infringe- 
ment has  no  relevancy  to  the  question  of  the  plaintiff's 
damages  ;  because  these  profits  are  sometimes  much  larger 
than  the  plaintiff's  pecuniary  injury  ;  *  and  where  they  are 
smaller,  that  fact  is  no  defence  to  the  plaintiff's  right  to  re- 
cover full  damages  for  the  pecuniary  injury  which  the  in- 
fringement caused  him  to  incur.2  But  where  a  patentee 
has  elected  to  recover  the  infringer's  profits,  instead  of  his 
own  damages,  in  an  action  in  equity,  he  cannot  recover,  for 
the  same  infringement,  his  damages  in  an  action  at  law.* 

To  ascertain  the  extent  of  the  pecuniary  injury  which  a 
particular  infringement  caused  a  particular  plaintiff,  it  is 
necessary  to  ascertain  the  difference  between  his  pecuniary 
condition  after  that  infringement,  and  what  that  condition 
would  have  been  if  that  infringement  had  not  occurred.4 
That  difference  depends  upon  the  way  in  which  the  plaintiff 
availed  himself  of  the  exclusive  right  infringed,  at  the  time 
the  infringement  took  place.  If  he  so  availed  himself,  by 
granting  licenses  to  others  to  do  the  things  which  the  de- 
fendant did  without  a  license,  then  that  difference  consists 
in  his  not  having  received  the  royalty  which  such  a  license 
would  have  brought  him.6  If  he  so  availed  himself,  by 
keeping  his  patent  right  a  close  monopoly  and  granting 
licenses  to  no  one,  then  that  difference  consists  of  the  money 
he  would  have  realized  from  such  a  close  monopoly  if  the 
defendant  had  not  infringed,  but  which  that  infringement 
prevented  him  from  receiving."  Therefore,  there  are  sev- 
eral methods  of  assessing  damages  for  infringements  of 

1  Seymour  fl.McCormick,  16  How-  U.  S.  552,  1885. 
nrd,  480, 1853;  New  York  v.  Ransom,          s  Seymour  v.  McCormick,  16  How- 

23  Howard,  487.  1859;  Packet  Co.  t>.  ard,  480,  1853  ;  New  York  v.  Ran- 

Sickles  19  Wallace,  611,  1873.  som,  23  Howard,  487, 1859;  Philip  v. 

*  Emerson  «.  Simin,  6  Fisher,  281.  Nock,  17  Wallace,  462.  1873;  C 
1873;  Dental  Vulcanite  Co.  v.  Van  v.   Wooster,  119  U.   S.  326.   1886 ; 
Antwerp,  2  Bann.  &  Ard.  255, 1876.  Tilghman  e.  Proctor,  125  U.  S.  143, 

»  Child  v  Iron  Works,  19  Fed.  1887;  Graham  t>.  Mfg.  Co.  24  Fed. 
Rep.  258,  1884.  Rep.  643,  1881. 

*  Yale  Lock  Co.  v.  Sargent,  117         6  Philp  «.  Nock,  17  Wallace,  462, 


414  DAMAGES.  [CHAP.   XIX. 

patents.  One  of  those  methods  consists  in  using  the  plain- 
tiff's established  royalty  as  the  measure  of  those  damages ; 
and  another  consists  in  ascertaining  those  damages  by  as- 
certaining what  the  defendant's  interference  with  the  plain- 
tiff's close  monopoly  prevented  the  latter  from  deriving 
therefrom.1  It  is  convenient  to  consider  these  two  criteria 
of  damages  separately,  and  in  the  order  in  which  they  have 
been  stated. 

§  556.  Royalties,  as  measures  of  damages,  are  sometimes 
objected  to  by  defendants,  and  sometimes  by  plaintiffs. 
When  invoked  by  a  plaintiff,  a  royalty  is  liable  to  one  class 
of  tests,  applied  on  behalf  of  the  defendant ;  and  when  in- 
voked by  a  defendant  to  limit  the  plaintiff's  recovery,  it  is 
liable  to  another  class  of  tests,  applied  on  behalf  of  the 
plaintiff. 

§  557.  A  defendant'  may  successfully  object  to  a  given 
royalty,  as  a  measure  of  the  plaintiff's  damages,  unless  it 
was  uniform,  and  was  actually  paid  or  secured  before  the 
defendant's  infringement  was  committed,  by  a  sufficient 
number  of  persons  to  show  that  people  who  have  occasion 
to  purchase  a  license  under  the  patent  can  afford  to  pay 
that  royalty.2  The  sale  of  a  single  license  is  not  sufficient 
to  establish  a  royalty;3  because  one  purchaser  may  give  a 
larger  sum  for  a  license  than  he  or  any  other  can  afford  to 
pay ;  whereas  such  a  business  error  is  not  likely  to  be  made 
by  a  considerable  number  of  persons  when  buying  licenses 
under  the  same  patent.  The  unanimous  opinion  of  twelve 
average  men  is  thought  to  be  the  most  reliable  criterion  of 
guilt  or  innocence ;  but  no  reasonable  person  would  hold 
that  view  of  the  opinion  of  any  one  of  the  twelve.  In  like 
manner,  the  unanimous  acquiescence  of  a  considerable 


1873;  Yale  Lock  Co.  v.  Sargent,  117  ,  1889 ;  Adams  v.  Stamping  Co. 

U.  S.  552, 1885;  McCoinb  «.  Brodie,  28  Fed.  Rep.  366,  1886. 

1  Woods,  153,  1871.  3  Judson  v.  Bradford,  3  Bann.  & 

1  Zane  t>.  Peck,  13  Fed.  Rep.  475,  Ard.  549,  1878 ;  Vxilcanite  Paving 
1882.  Co.  t>.  Pavement  Co.  36  Fed.  Rep. 

2  Rude    v.  Westcott,    129   U.   S.  378,  1888. 


CHAP.  XIX.J  DAMAGES.  415 

number  of  men  in  a  particular  royalty,  is  evidence  of  its 
substantial  justice ;  while  the  acquiescence  of  one  only,  of 
the  same  men,  would  have  no  convincing  force. 

The  amount  of  the  royalty  relied  upon,  must  have  been 
actually  paid  or  secured  by  the  licensees,  in  order  to  make 
it  a  measure  of  damages  against  other  iiifringers.  Were 
the  rule  otherwise,  there  would  be  no  safeguard  against  col- 
lusion between  patentees  and  licensees  for  the  purpose  of 
imposing  on  infringers  and  other  third  parties.  It  follows 
that  the  mere  production  of  a  quantity  of  licenses,  purport- 
ing to  have  been  granted  at  a  certain  rate,  cannot  establish 
a  royalty  at  that  rate.  Somebody  must  make  oath  that  the 
ostensible  price  of  the  licenses  was  their  true  price,  before 
they  can  have  that  effect.  The  oath  and  not  the  license  be- 
ing the  best  evidence  of  the  royalty,  the  royalty  may  be 
proved  by  the  oath  without  the  production  of  the  license, 
even  where  the  license  is  in  writing.1 

A  royalty,  in  order  to  be  binding  on  a  defendant  who  was 
a  stranger  to  the  licenses  which  established  it,  must  be  a 
uniform  royalty.5  This  rule  does  not  imply  that  a  patentee 
may  not  change  the  rate  of  his  royalty  as  often  as  he  can 
get  a  sufficient  number  of  licensees  to  acquiesce  in  such  a 
change ; 3  but  it  does  exclude  from  consideration,  all  such 
licenses  as  were  given  at  variant  rates,  for  no  better  reason 
than  variant  ability  on  the  part  of  the  licensees  to  negotiate 
for  a  license,  or  to  resist  a  suit  for  infringement.4 

So  also,  a  particular  royalty  may  be  successfully  objected 
to  by  a  defendant,  if  it  was  not  established  till  after  the  in- 
fringement sued  upon  was  committed.5  And  it  is  probable 
that  a  defendant  may  avoid  the  application  of  a  particular 
royalty,  by  showing  that  a  different  rate  was  established  in 


1  Wooster  •».   Simonson,  20  Fed.  4  Black®.  Munson,  14  Blatch.  268, 

Rep.  316,  1884.  1877  ;  United  Nickel  Co.  «.  Railroad 

8  Westcott  v.  Rude,  19  Fed.  Rep.  Co.  86  Fed.  Rep.  190,  1888. 

833.  1884.  5  Emigh  0.  Railroad   Co.  6  Fed. 

3  Asrnus  v.  Freeman,  34  Fed.  Rep.  Rep.  284,  1881. 
902,  1888. 


416  DAMAGES.  [CHAP.  XIX. 

the  particular  city,  county,  or  State  wherein  he  unlawfully 
availed  himself  of  the  patentee's  invention. 

§  558.  A  plaintiff  may  successfully  object  to  a  particular 
royalty  as  a  measure  of  his  damages,  where  that  royalty  was 
established,  and  was  intended  to  be  established,  within  a 
particular  territory  only ;  or  where  it  was  changed  or  aban- 
doned before  the  infringement  in  suit  was  committed.  These 
two  points  rest  upon  obvious  reasons.  A  patentee  may  wish 
to  hold  a  close  monopoly  on  his  invention  in  Maine,  while 
willing  to  grant  licenses  in  Florida ;  or  he  may  rightfully 
demand  a  much  larger  royalty  in  Minnesota,  than  that 
which  he  is  willing  to  accept  in  Texas  or  in  Oregon.  In 
such  a  case,  it  is  clear  that  his  Oregon  royalty  is  not  to  be 
forced  upon  him  for  infringement  committed  in  Minnesota ; 
and  that  his  business  in  Maine  is  not  to  be  ruined  by  in- 
fringers  who  have  nothing  worse  to  fear  at  the  end  of  a  suit 
than  the  payment  of  a  royalty  like  that  established  in  Flor- 
ida. So  also,  it  has  often  happened,  and  may  happen  again, 
that  an  inventor  is  forced  by  poverty,  or  other  misfortune, 
to  accept  inadequate  royalties  during  the  earlier  years  of 
his  exclusive  right.  In  such  a  case,  it  is  clear  that  he  ought 
to  be  permitted  to  increase  the  rate  whenever  he  can  get 
licensees  to  consent  thereto ;  or  to  abandon  his  royalty  al- 
together and  hold  a  close  monopoly  on  his  invention,  as  far 
as  he  can  do  so  consistently  with  licenses  outstanding. 

§  559.  Money  paid  for  infringement  already  committed 
does  not  establish  nor  tend  to  establish  a  royalty.1  A  price 
paid  to  compromise  a  pending  action,  or  an  existing  right 
of  action,  may  sometimes  be  larger,  and  sometimes  be 
smaller,  than  a  proper  royalty  would  be.  It  may  be  larger, 
where  the  iufringer  is  a  person  who  is  disinclined  to  litiga- 

1  Rude  0.  Westcott,  129  U.  S.  256,  Westcott  v.  Rude,  19  Fed.  Rep.  832, 

1889;  Black  v.  Munson,  14  Blatck.  1884;   Gottfried  v.  Brewing  Co.  22 

268,  1877;  Greenleaf  «.  Mfg.  Co.  17  Fed.    Rep.    433.    1884  ;    Comely  «. 

Blatch.  253, 1879;  Matthews  t>.  Span-  Marckwald,  32  Fed.  Rep.  292,  1885; 

genberg,   14  Fed.   Rep.  350,  1882;  United  Nickel  Co.  «.  Railroad  Co. 

National    Car   Brake  Shoe  Co    v.  36  Fed.  Rep.  190,  1888. 
Mfg.  Co.  19  Fed.  Rep.  517,  1884 ; 


CHAP.  XIX.]  DAMAGES.  417 

tion  or  where  he  has  some  reason  to  fear  a  judgment  for 
triple  damages,  or  where  the  compromise  releases  him,  not 
only  from  damages,  but  also  from  all  rights  of  action  for 
infringer's  profits.  It  may  be  smaller,  where  the  infringer 
is  presumably  insolvent,  or  where  the  amount  involved  is 
too  small  to  justify  the  expense  incident  to  its  collection  by 
an  action  at  law. 

§  560.  A  royalty  which  is  reserved  as  the  whole  or  a  part 
of  the  purchase  price  of  a  patent,  is  not  a  proper  one  to 
measure  damages  as  against  an  infringer.1  It  may  be  too 
large,  or  it  may  be  too  small  for  that  purpose.  It  will  be 
too  large,  when  the  patent  is  of  such  a  nature  that  the  buyer 
can  afford  to  pay  more  for  a  close  monopoly,  than  for  a 
license  to  compete  with  other  licensees."  It  will  be  too 
small,  where  it  is  for  the  interest  of  the  owners  of  the  pat- 
ent to  subdivide  the  right  to  practise  the  invention.  In  the 
latter  class  of  cases,  the  buyer,  in  order  to  get  paid  for 
introducing  the  invention  and  retailing  the  licenses,  must 
sell  them  at  a  higher  rate  than  that  which  he  pays  to  the 
patentee. 

§  561.  A  royalty  provided  for  in  licenses  to  make  and  use, 
is  no  measure  of  damages  for  an  infringement  which  con- 
sisted of  making  and  selling  the  patented  thing ;  nor  is  a 
royalty  which  was  established  by  licenses  to  make  and  sell 
specimens  of  the  invention  covered  by  a  patent,  any  criterion 
of  the  injury  which  may  have  been  inflicted  on  the  pecuniary 
interests  of  the  owner,  by  unlawfully  making  and  using 
such  specimens.3  These  rules  rest  upon  undeniable  reasons. 
The  value  of  some  patents  resides  almost  entirely  in  the 
exclusive  right  to  make  and  sell,  while  that  of  others  con- 
sists almost  wholly  in  the  exclusive  right  to  make  and  use, 
the  inventions  which  they  respectively  cover. 

§  562.  In  measuring  damages  with  a  royalty,  due  regard 
must  be  had  to  proportion.  Where  an  infringement  was 


1  La  Baw  v.  Hawkins,  2  Bann.  &      147,  1886. 

Ard.  564,  1877.  3  Colgate  «.  Mfg.  Co.  28  Fed.  Rep. 

*  Colgate  v.  Mfg.  Co.  28  Fed.  Rep.      147,  1886. 


418  DAMAGES.  [CHAP.  XIX. 

smaller  in  extent,  or  shorter  in  duration,  than  the  corre- 
sponding doings  which  were  authorized  by  the  licenses 
which  established  the  royalty,  it  is  but  just  that  the  dam- 
ages should  be  assessed  at  a  correspondingly  smaller  sum, 
unless  there  are  special  facts  in  the  case  which  render  the 
particular  extent  of  the  infringement  immaterial  to  the 
plaintiff.1  In  like  manner,  damages  will  amount  to  a  sum 
correspondingly  larger  than  the  royalty  which  constitutes 
their  criterion,  when  the  infringement  in  suit  was  larger  or 
was  longer  than  the  doings  authorized  by  the  licenses  which 
established  the  royalty.  So  also,  where  only  part  of  the 
inventions  covered  by  a  particular  patent,  are  unlawfully 
appropriated  by  an  infringer,  he  is  liable  for  only  an  equi- 
table proportion  of  the  royalty  which  has  been  established 
for  all  of  those  inventions  jointly  ; a  and  where  a  royalty  has 
been  established  for  the  joint  employment  of  all  of  the  in- 
ventions covered  by  several  patents,  damages  for  the  in- 
fringement of  part  of  those  patents  may  be  equitably  as- 
sessed by  dividing  that  royalty  into  portions  proportionate 
to  the  value  of  the  several  inventions  covered  by  those 
patents.3 

§  563.  Where  no  established  royalty  is  applicable  as  a 
measure  of  the  damages  caused  by  a  particular  infringe- 
ment, those  damages  may  sometimes  be  ascertained  by  the 
second  method  :  that  is,  by  finding  what  the  plaintiff  would 
have  derived  from  his  monopoly  if  the  defendant  had  not 
interfered,  but  which  he  failed  to  realize  because  of  that 
interference  with  his  rights.  Where  the  owner  of  a  patent 
is  able  to  supply  the  whole  demand  for  the  thing  it  covers 
or  produces,  and  where  the  whole  demand  would  go  to  him 
if  not  diverted  by  some  infringer,  it  is  clear  that  the  injury 


1  Birdsall  v.  Coolidge,  93  U.  S.  70,  *  Willimantic  Thread  Co.  v.  Clark 

1876 ;  Judson  v.  Bradford,  3  Bann.  Thread  Co.  27  Fed.  Rep.  865,  1886; 

&  Ard.  549, 1878;  Woosterw.  Simon-  Asmus  v.  Freeman,   34  Fed.  Rep. 

son,  16  Fed.  Rep.  680,  1883 ;  West-  903.  1888. 

cott  v.  Rude,  19  Fed.  Rep.  834, 1884;  3  Porter  Needle  Co.  v.  Needle  Co. 

Bates  v.  Railroad  Co.  32  Fed.  Rep.  22  Fed.  Rep.  829,  1885. 
628,  1887. 


CHAP.  XIX.]  DAMAGES.  419 

caused  by  a  particular  infringer  can  be  ascertained  by  find- 
ing what  pecuniary  advantage  the  owner  of  the  patent  would 
have  derived  if  he  had  supplied  that  portion  of  the  demand 
which  was  supplied  by  that  infringer.  The  two  conditions 
of  this  rule  are  prerequisites  of  its  applicability.  The  high- 
est authority  has  announced  that :  "  What  a  patentee  would 
have  made  if  the  infringer  had  not  interfered  with  his 
rights,  is  a  question  of  fact,  and  not  a  judgment  of  law." ' 
In  order  to  show  that  a  patentee  would  in  fact  have  made 
a  particular  profit,  if  an  infringer  had  not  forestalled  his 
sales,  it  is  necessary  to  show  that  he  would,  but  for  that 
infringer,  have  made  those  sales  ;  *  and  to  that  end  it  is 
necessary  to  show  that  he  could  have  supplied  the  articles 
wanted,  and  that  the  persons  wanting  those  articles  would 
have  bought  them  of  him  had  no  infringer  interfered.3  But 
these  points  may  be  sufficiently  established  without  being 
demonstrated ;  because  demonstration  would  generally  be 
impossible,  and  because  every  reasonable  doubt  relevant 
thereto,  is  to  be  resolved  in  favor  of  the  plaintiff.4  Where 
these  facts  are  proved,  the  damages  of  the  patentee  will 
consist  of  the  profits  which  he  would  have  derived  from  the 
sales  made  by  the  infringer,  if  the  patentee  had  made  those 
sales  ;  supplemented  by  the  amount  of  whatever  reduction 
of  prices  the  patentee  was  compelled,  by  the  defendant's 
competing  infringement,  to  make  even  upon  the  goods 
which  he  did  sell/  Where  it  does  not  appear  that  the 
owner  of  a  patent  could  and  would  have  supplied  the  de- 
mand which  was  supplied  by  an  infringer,  even  if  no  in- 
fringer had  interfered,  these  last  mentioned  elements  of 
damages  may  still  be  proved,  and  a  verdict  be  founded  upon 


'Seymour*?.  McCormick,  16  How-  Douglas,  2  Fisher,  340,  1863;  Sar- 

ard,  490,  1853.  gent  t>.  Mfg.  Co.  17  Blatch.  247, 1879; 

2  Dobson  v.  Dornan,  118  U.  8.  18.  Hall  v.  Stern,  20  Fed.  Rep.  788, 1884. 
1885  ;  Roemer   v.   Simon,  31   Fed.  4  Creamer  v.  Bowers,  35  Fed.  Rep. 
Rep,  41,  1887;  Bell  t.  Stamping  Co.  208,  1888. 

32  Fed.  Rep.  551,  1887.  6  Fitch  v.  Bragg,  16  Fed.  Rep.  247, 

3  Goodyear  v.  Bishop,  2  Fisher,  1883;  Hobbie  v.  Smith,  27  Fed.  Rep. 
101,    1861 ;    Magic    Ruffle    Co.    v.  662,  1886. 


420  DAMAGES.  [CHAP.   XIX. 

either  or  both  of  them  alone.1  But  in  order  to  constitute 
either  a  part  or  the  whole  of  the  foundation  of  a  verdict, 
proof  of  hurtful  competition  must  include  evidence  that  it 
was  the  defendant's  infringement  that  caused  the  reduction 
of  prices,  and  also  evidence  of  the  extent  of  the  reduction 
so  caused.2 

Where  damages  cannot  be  assessed  on  the  basis  of  a 
royalty,  nor  on  that  of  lost  sales,  nor  on  that  of  hurtful 
competition,  the  proper  method  of  assessing  them  is  to  as- 
certain what  would  have  been  a  reasonable  royalty  for  the 
inf ringer  to  have  paid.3  In  determining  this  point,  the 
utility  and  cheapness,  of  the  patented  thing,  as  compared 
with  other  things  known  at  the  time  of  the  infringement, 
and  capable  of  doing  similar  work,  will  always  be  the  lead- 
ing guides. 

§  564.  Damages  for  infringement  by  making,  without  un- 
lawfully selling  or  using,  specimens  of  a  patented  thing  will 
be  nominal  only,4  unless  there  is  an  established  royalty  for 
such  making,  or  unless  such  making  is  followed  by  using  or 
selling  in  a  foreign  country,  or  is  followed  by  using  or  sell- 
ing in  this  country  after  the  expiration  of  the  patent. 
Where  an  infringer  made  specimens  of  a  thing  covered  by  a 
patent,  and  afterward  sold  or  used  them  in  a  foreign  coun- 
try, the  measure  of  damages  is  whatever  royalty  has  been 
established  for  a  license  to  make  and  use  such  specimens 
for  such  a  purpose.5  Where  no  royalty  of  the  kind  has 
been  established,  there  is  generally  no  way  of  assessing 
damages  in  such  a  case  other  than  to  determine  what  a 
reasonable  royalty  would  have  been.  Damages  can  seldom 
be  assessed  in  such  a  case  on  any  theory  that  the  infringer's 
doings  interfered  with  the  patentee's  sales  ;  because  it  will 

1  Yale  Lock  Co.  v.  Sargent,  117  Co.  37  Fed.  Rep.  654,  1889. 

U.  S.  552, 1885;  Creamer  v.  Bowers,  *  Whitternore  v.  Cutter,  1  Gallison, 

35  Fed.  Rep.  207,  1888.  483, 1813;  Carter  v.  Baker,  4  Fisher, 

9  Ingersoll  *.  Musgrove,  3  Bann.  419,  1871. 

&  Ard.  304,  1878.  5  Ketchuin  Harvester  Co.  v.  John- 

3  McKeever  v.  United   States,  23  son  Harvester  Co.  8  Fed.  Rep.  586, 

Off.  Gaz.  1528,1879;  Royer  «.  Coupe,  1881. 
29  Fed.  Rep.  371, 1886;  Gary  «.  Mfg. 


CHAP.  XIX.]  DAMAGES.  421 

generally  be  impossible  to  prove  that  the  foreign  demand 
would  otherwise  have  come  to  the  patentee.  These  consid- 
erations seem  also  to  apply  to  cases  where  the  infringement 
consisted  of  making  specimens  of  a  patented  thing  shortly 
before  the  expiration  of  the  patent,  with  a  view  to  using  or 
selling  them  shortly  after  that  event.  Such  a  scheme  of 
proceeding  is  undoubtedly  injurious  to  a  patentee,  for  if 
persons  wait  till  after  the  expiration  of  a  patent  before  mak- 
ing the  articles  it  covers,  they  will  not  be  able  to  use  or  sell 
those  articles  till  some  time  still  later,  and  during  the  inter- 
val the  patentee  may  nearly  or  quite  maintain  his  former 
command  of  the  market. 

§  565.  The  evidence  of  damages  must  be  reasonably 
definite,1  in  order  to  justify  a  jury  in  finding  a  verdict  for 
more  than  a  nominal  amount.  Conjecture  will  not  perform 
the  office  of  proof,  nor  can  imagination  take  the  place  of 
calculation  in  this  behalf.2  But  this  rule  is  not  to  be  used 
to  defeat  the  ends  of  justice.  It  may  happen  that  a  plain- 
tiff can  prove  the  measure  of  his  damages  with  precision, 
while  unable  to  prove  the  real  extent  of  the  defendant's 
infringement.  In  such  a  case,  the  defendant  usually  can 
remove  the  uncertainty,  because  he  is  likely  to  know  or  be 
able  to  ascertain  what  and  how  much  he  has  done.  If  by 
omitting  to  supply  the  information,  a  defendant  could  avert 
a  verdict  for  proper  damages,  he  could  easily  defeat  a 
meritorious  cause.  But  the  law  will  not  allow  itself  to  be 
thus  circumvented.  On  the  contrary,  it  is  the  rule,  that 
where  a  plaintiff  introduces  evidence  to  show  that  the 
damages  were  large,  and  to  show  the  amount  of  those  dam- 
ages as  accurately  as  the  nature  of  the  case  permits  him  to ' 
do,  and  where  the  defendant  offers  no  evidence  upon  the 
subject,  it  becomes  the  function  of  the  jury  to  estimate 
those  damages  as  best  they  can  on  the  basis  of  the  plain- 
tiff's evidence.3  In  making  such  an  estimate  a  jury  ought 


1  Creamer  t>.  Bowers,  35  Fed.  Rep.      ard,  487,  1859. 

208,  1888.  3  Stephens  «.  Felt,  2  Blatch.  88, 

*  New  York  t>.  Ransom,  23  How-      1846. 


422  DAMAGES.  [CHAP.  xix. 

to  resolve  every  point  of  uncertainty  against  the  defendant, 
for  he  had  it  in  his  power  to  give  them  accurate  data  upon 
which  to  compute.1 

§  566.  Remote  consequential  damages  cannot  be  em- 
bodied in  a  verdict  for  an  infringement  of  a  patent.2  The 
instances  in  which  such  damages  have  been  claimed  are 
but  few ;  but  they  are  likely  to  become  more  numerous 
hereafter.  It  is  therefore  proper  to  mention  such  injuries 
as  will  probably  be  held  to  fall  within  such  a  category. 

Pecuniary  injury  may  result  to  a  patentee  from  a  particu- 
lar infringement,  in  that  it  caused  him  to  lose  sales  on  un- 
patented  articles  usually  sold  with  the  patented  thing  in 
question ;  or  in  that  it  so  unexpectedly  reduced  the  busi- 
ness of  the  patentee  as  to  make  it  necessary  for  him  to  sell 
unpatented  property  at  less  than  its  real  value,  or  to  borrow 
money  at  more  than  a  proper  rate  of  interest,  in  order  to 
meet  his  pecuniary  engagements  ;  or  in  that  it  encouraged 
other  persons  to  infringe,  from  whom,  by  reason  of  insol- 
vency or  other  obstacle,  no  recovery  can  be  obtained  ;  or  in 
that  such  infringement  caused  the  patentee  so  much  trouble 
and  anxiety  that  he  incurred  loss  from  inability  to  attend 
to  other  business.  But  pecuniary  injury  of  either  of  these 
kinds  would  be  such  an  indirect  consequential  matter  as 
not  to  furnish  any  part  of  a  proper  basis  for  recoverable 
damages. 

§  567.  Exemplary  damages  cannot  lawfully  be  given  by  a 
jury  for  any  infringement  of  a  patent.'  The  meaning  of 
this  rule  is  that  juries  are  to  base  verdicts  on  plaintiffs 
injuries,  and  not  on  defendant's  ill-deserts.  Their  function 
is  to  award  compensation  to  the  injured,  not  punishment 
to  the  injurer.  The  power  to  inflict  punitive  damages  is 
committed  by  the  statute  to  the  judge.  He  may  exercise 


1  National  Car  Brake  Shoe  Co.  v.  143,  1850;  Hall  v.  Wiles,  2  Blatch. 

Mfg.  Co.  19  Fed.  Rep.  520.  1884.  200,  1851;  Parker  v.  Hulme.  1  Fish- 

8  Carter  v.  Baker,  4  Fisher,  421,  er.  56,  1849 ;  Haselden  v.  Ogden,  3 

1871.  Fisher,  378,  1868  ;  Russell  «.  Place, 

3  Wilbur    v.   Beecher,   2  Blatch.  5  Fisher,  134,  1871. 


CHAP.  XIX.]  DAMAGES.  423 

that  power  by  entering  a  judgment  for  any  sum  above  tbe 
amount  of  the  verdict,  not  exceeding  three  times  that 
amount,  together  with  costs.'  The  costs  are  to  be  added  to 
the  increased  verdict,  and  the  judgment  cannot  be  entered 
for  a  sum  three  times  greater  than  the  aggregate  of  the  ver- 
dict and  the  costs ;  and  if,  for  any  reason,  no  costs  are 
awarded  to  the  plaintiff,  that  fact  neither  ousts  the  power 
of  the  court  to  enter  a  judgment  for  a  sum  larger  than  the 
verdict,  nor  constitutes  a  reason  for  exercising  that  power 
where  no  other  reason  exists.2  But  that  power  will  be  ex- 
ercised where  the  defendant's  infringement  was  deliberate 
and  intentional,  even  though  it  may  have  been  committed 
under  an  erroneous  opinion  of  the  plaintiff's  rights  ;  *  or 
where  the  defendant  acted  in  bad  faith,  or  has  been  stub- 
bornly litigious,  or  has  caused  unnecessary  trouble  and  ex- 
pense to  the  plaintiff ; 4  but  not  merely  because  the  defend- 
ant's defence  was  so  extensive  as  to  require  great  expendi- 
ture to  overcome  it.5 

§  568.  Increased  damages  may  properly  be  awarded  by  a 
court,  where  it  is  necessary  to  award  them  in  order  to  pre- 
vent a  defendant  infringer  from  profiting  from  his  own 
wrong,  whether  that  wrong  was  intentional  or  was  unwitting. 
The  power  conferred  by  the  statute  is  general.  It  is  not 
confined  to  awarding  punitive  damages,  but  is  to  be  exer- 
cised "  according  to  the  circumstances  of  the  case." "  Among 
the  circumstances  of  patent  cases,  is  the  fact  that  the  profits 
which  defendants  derive  from  their  infringements,  are  often 
much  larger  than  the  actual  damages  which  those  infringe- 
ments cause  plaintiffs  to  sustain.  If,  in  such  a  case,  the 
defendant  is  forced  to  pay  no  more  than  the  actual  dam- 
ages, it  is  clear  that  he  will  have  derived  advantage  from 

1  Revised  Statutes,  Section  4919  ;  1871. 

Seymour  v,  McCormick,16  Howard,  *  Day  v.  Woodworth,  18  Howard, 

489,  1853.  372,  1851;  Teese  t>.  Huntingdon,  23 

9  Guyon  v.  Serrell,  1  Blatch.  246,  Howard,  2.  1859. 

1847.  5  Welling  t.  La  Ban,  35  Fed.  Rep. 

s  Russell  t>.  Place,  9  Blatch.  175,  303,  1888. 

1871;  Peek  v.  Frame,  9  Blatch.  194,  •  Revised  Statutes,  Section  4919. 


424:  DAMAGES.  [CHAP.  XIX. 

his  own  wrong.  It  would  be  an  imperfect  system  of  law 
that  would  thus  put  a  premium  upon  its  own  violation. 
Prior  to  1882,  it  was  understood  that  means  of  preventing 
such  a  result  resided  in  an  option,  which  it  was  said  every 
patentee  had,  of  suing  at  law  for  his  damages,  or  in  equity 
for  the  inf ringer's  profits.1  But  in  that  year,  that  doctrine 
was  set  aside  by  the  Supreme  Court,  and  the  jurisdiction 
of  equity  was  denied  to  a  large  class  of  cases  which  would 
be  entitled  to  such  a  jurisdiction  under  such  a  rule.2  In  a 
case  where  no  injunction  happens  to  be  proper,  and  wherein 
the  defendant's  profits  are  larger  than  the  plaintiffs  dam- 
ages, there  is  now  no  certain  means  of  preventing  the  de- 
fendant from  deriving  advantage  from  his  own  wrong,  other 
than  that  which  resides  in  the  power  of  the  court  to  enter 
a  judgment  for  a  larger  sum  than  the  actual  damages 
found  in  the  verdict.  That  being  the  only  certain  means 
of  making  infringement  unprofitable  to  infringers,  it  may 
well  be  freely  used  for  that  purpose  by  the  Federal  courts.3 
§  569.  A  verdict  for  actual  damages  cannot  be  averted  by 
evidence  that  the  defendant  was  ignorant  of  the  existence 
of  the  patent  at  the  time  he  infringed.4  All  infringers  have 
constructive  notice  of  all  patents,  because  all  letters  patent 
are  recorded  in  the  Patent  Office.  There  is  no  more  hard- 
ship involved  in  the  rule  that  infringers  are  bound  to  take 
notice  of  patents,  than  there  is  in  the  rule  that  buyers  of 
land  are  bound  to  take  notice  of  the  real  estate  records,  or 
in  the  rule  that  all  citizens  are  bound  to  take  notice  of  the 
laws  of  their  country.  The  amount  of  pecuniary  injury 
which  an  infringement  causes  a  patentee  is  not  affected  by 
the  fact  that  the  infringer  did  not  know  of  the  existence  of 
the  patent  which  he  infringed  ;  and  where  one  man  has 


1  Tucker  v.  Spalding,  13  Wallace,  Ard.  117,  1874. 

453,  1871;  Birdsall  v.  Coolidge,  93  2  Root  v.  Railway  Co.  105  U.  S. 

U.    S,  68,   1876 ;  Perry  «.  Corning,  189,  1881. 

6  Blatch.  134.  1868;  Howes  v.  Nute,  3  See  Sections  419  and  420  of  this 

4  Cliff.  174,  1870;  Cowing  «.  Rum-  book. 

sey,   8  Blatch.    36,  1870;  Smith  v.  *  Emerson  v.  Simm,  6  Fisher,  281, 

Baker's  Administrators,  1  Bann.  &  1873. 


CHAP.  XIX.]  DAMAGES.  425 

obtained  possession,  through  his  own  mistake,  of  the  fruits 
of  the  property  of  another,  it  is  better  that  he  be  compelled 
to  relinquish  them,  than  that  the  true  owner  be  prevented 
from  enjoying  the  proceeds  of  his  own  estate. 

§  570.  Neither  counsel  fees  nor  any  other  expenses  inci- 
dent to  litigation  can  be  included  in  a  verdict  for  actual 
damages  in  a  patent  case.1  There  is  no  more  reason  for 
allowing  a  successful  plaintiff  to  recover  such  items,  than 
there  is  for  giving  a  similar  recovery  to  a  successful  de- 
fendant. Certain  expended  fees  may  be  recovered  as  costs 
by  either ;  but  no  expenditures  or  costs  can  be  recovered  as 
damages. 

§  571.  Interest  should  be  allowed  on  royalties,  from  the 
time  those  royalties  ought  to  have  been  paid,  in  all  cases 
where  a  royalty  is  the  measure  of  the  plaintiff's  damages.5 
In  such  a  case  the  damages  are  liquidated  at  such  time  as 
the  royalty  would  have  been  due,  if  the  defendant  had 
elected  to  purchase  instead  of  to  infringe  the  right  to  use 
the  invention  in  suit.  No  interest  is  due  on  damages  meas- 
ured otherwise  than  by  a  royalty,  because  such  damages 
are  unliquidated  until  they  are  ascertained  by  an  action,' 
except  where  the  method  of  measurement  is  as  definite  and 
conclusive  as  it  is  in  the  case  of  a  royalty.4 

1  Day®.  Woodworth,  13  Howard,  *  McCormickt?.  Seymour,  3  Blatch. 
373,  1851;  Teese  v.  Huntington,  23  222,  1854;  Goodyear  v.  Bishop,  2 
Howard,  8,  1859;  Philp  «.  Nock,  17  Fisher.  162,  1861  ;  Locomotive 
Wallace,  462,  1873;  Whittemorc  v.  Safety  Truck  Co.  t>.  Pennsylvania 
Cutter,  1  Gallison,  429, 1813;  Stimp-  Railroad  Co.  2  Fed.  Rep.  682,  1880. 
son  t.  The  Rail  Roads,  1  Wallace,  3  Gilpin  v.  Consequa,  3  Washing- 
Circuit  Court  Reports,  164,  1847 ;  ton,  194,  1813. 
Holbrook  v.  Small,  3  Bann.  &  Ard.  4  Creamer  «.  Bowers,  35  Fed.  Rep. 
626,  1878.  207,  1888. 


CHAPTER  XX. 


ACTIONS  IN  EQUITY. 


572.  Jurisdiction  of  equity  in  patent 
causes. 

573.  Jurisdiction  of  equity  to  assess 
and  decree  damages. 

574.  The  complainant. 

575.  The  defendant. 

576.  Original  bills. 

577.  The  title  of  the  court. 

578.  The  introductory  part. 

579.  The  stating  part. 

580.  The  prayer  for  relief. 

581.  The  interrogating  part. 

582.  The  prayer  for  process. 

583.  The  signature. 

584.  The  oath. 

585.  Bills  to  perpetuate  testimony. 

586.  Amendments  to  bills,  when  al- 
lowed. 

587.  Amendments    to    bills,    when 
necessary. 

588.  Demurrers,  pleas,  and  answers. 

589.  Pleas  in  equity. 

590.  Arguments    upon    pleas,   and 
replications  to  pleas. 

591.  Defences  in  equity  cases. 

592.  Non-jurisdiction  of  equity. 

593.  The  same  subject  continued. 
-594.  Non-jurisdiction  in  equity,  how 

set  up  as  a  defence. 

595.  Prior  adjudication    at  law  is 
not  necessary  to  jurisdiction  in 
equity. 

596.  Laches. 

597.  Laches,  how  set  up. 

598.  The  first  of  the  twenty-seven 
defences. 

599.  The  second  defence. 


600.  The  third  defence. 

601.  The  fourth  defence. 

602.  The  fifth  and  sixth  defences. 

603.  The  seventh  defence. 

604.  The  eighth  defence. 

605.  The  ninth  and  tenth  defences. 

606.  The  eleventh  defence. 

607.  The  twelfth  defence. 

608.  The  thirteenth  defence. 

609.  The  fourteenth  defence. 

610.  The  fifteenth  defence. 

611.  The  sixteenth  defence. 

612.  The  seventeenth  defence. 

613.  The  eighteenth  defence. 

614.  The  nineteenth  defence. 

615.  The  twentieth  defence. 

616.  The  twenty-first  defence. 

617.  The  twenty-second  defence. 

618.  The  twenty-third  defence. 

619.  The  twenty-fourth  defence. 

620.  The  twenty-fifth  defence. 

621.  The  twenty-sixth  defence. 

622.  The  twenty- seventh  defence. 

623.  Replications. 

624.  Subordinate    bills    in    aid    of 
original  bills. 

625.  Supplemental  bills. 

626.  Bills  in  the  nature  of  supple- 
mental bills. 

627.  Bills  of  revivor. 

628.  Bills  in  the  nature  of  bills  of 
revivor. 

629.  Bills  of    revivor   and  supple- 
ment. 

630.  Leave  of  court  to  file  supple- 
mental bills,  and  bills  in  the 

nature  of  supplemental  bills. 
426    '- 


CHAP.   XX.] 


ACTIONS   IN   EQUITY. 


427 


631.  Demurrers,  pleas,  and  answers 
to  supplemental    bills  and  to 
bills  in  the  nature  of  supple- 
mental bills. 

632.  Hearings. 

633.  Interlocutory  hearings. 

634.  Questions  of    law  arising  on 
hearings. 

6u5.  Questions  of   fact  arising  on 
hearings. 

636.  Evidence  in  support  of  the  bill. 

637.  Evidence    in    support    of   de- 
fences. 

638.  Testimony. 

639.  Depositions. 

640.  Depositions    taken    in    other 
cases. 

641.  Documentary  evidence. 

642.  Trial  by  jury  in  equity  cases. 

643.  Hearings  by  masters  in  chan- 
cery. 

644.  Interlocutory  decrees. 


645.  Petitions  for  rehearings. 

646.  Rehearings  for  matter  apparent 
on  the  record. 

647.  Rehearings  on  account  of  newly 
discovered  evidence. 

648.  Supplemental  bills  in  the  na- 
ture of  bills  of  review. 

649.  Final  decrees. 

650.  Bills  of  review. 

651.  Bills  of  review  to  correct  errors 
apparent  on  the  pleadings  or 
final  decree. 

652.  Bills  of    review   to  introduce 
evidence  discovered  after  the 
entry  of  the  final  decree. 

653.  Bills  in  the  nature  of  bills  of 
review. 

654.  Appeals. 

655.  Hearings  on  appeals. 

656.  Decisions  on  appeals. 

657.  Certificates  of  division  of  opin- 


§  572.  JUKISDICTION  in  equity,  in  patent  litigation,  is  con- 
ferred upon  the  same  courts  that  are  authorized  to  exercise 
jurisdiction  at  law,  in  that  branch  of  jurisprudence.'  The 
two  kinds  of  jurisdiction  are  kept  as  distinct  in  those  courts, 
as  if  they  were  conferred  upon  different  tribunals.  Equi- 
table relief  cannot  be  had  in  any  action  at  law ;  and  legal 
relief  cannot  be  had  in  any  action  in  equity,  except  as  inci- 
dental to  some  equitable  relief  granted,  or  at  least  right- 
fully prayed  for,  therein.  The  only  function  of  actions  at 
law  in  patent  cases,  is  to  give  damages  for  past  infringe- 
ments of  patents.  The  principal  function  of  actions  in 
equity  in  such  cases,  is  to  restrain  future  infringements 
of  patents,  by  means  of  the  writ  of  injunction.  In  every 
case  where  an  injunction  is  proper,  a  court  of  equity, 
in  order  to  avoid  a  multiplicity  of  actions,  will  take  an 
account  of  the  profits  which  the  defendant  derived  from 
infringing  the  complainant's  patent,  and  will  compel  the 
defendant  to  pay  their  amount  to  the  complainant.  And 


Revised  Statutes,   Sections   629  and  4921.    Section  379  of  this  book. 


428  ACTIONS   IN   EQUITY.  [CHAP.  XX. 

equity  has  jurisdiction,  independent  of  any  injunction  or 
right  to  an  injunction,  to  grant  this  relief  relevant  to  profits, 
in  all  patent  cases  wherein  some  impediment  prevents  a 
resort  to  remedies  purely  legal,  or  wherein  special  circum- 
stances render  the  remedy  obtainable  by  an  action  at  law, 
difficult,  inadequate,  or  incomplete.1 

§  573.  Wherever  equity  has  jurisdiction  to  decree  an  ac- 
count of  the  defendant's  profits,  it  also  has  jurisdiction  to 
assess  the  damages  which  the  complainant  sustained  on 
account  of  the  defendant's  infringement.2  Having  ascer- 
tained the  amount  of  both,  if  the  profits  are  found  to  equal 
or  exceed  the  damages,  the  court  will  enter  a  decree  for 
their  recovery,  and  will  do  nothing  further  about  the  dam- 
ages.3 Where  the  accounting  shows  no  such  profits,  but 
does  show  such  damages,  the  court  will  enter  a  decree  for 
the  amount  of  the  latter,  and  will  do  no  more."  Where  the 
accounting  shows  both  profits  and  damages,  and  shows  the 
latter  to  be  the  larger  of  the  two,  a  decree  will  be  entered 
for  that  larger  sum  alone.5  The  statutory  provision  which 
enables  a  court  of  equity  to  assess  damages  in  a  patent  case 
originated  in  1870.6  It  was  a  new  remedial  provision  of  the 
Consolidated  Patent  Act  of  that  date,  and  was  expressly 
made  applicable  to  all  suits  thereafter  commenced,  even  on 
rights  of  action  which  theretofore  accrued.7  In  assessing 
damages,  equity  follows  the  law,8  and  is  guided  by  the  rules 
and  principles  which  are  set  forth  in  Chapter  XIX.  of  this 
book.  But  where  damages  are  measured  by  a  royalty, 
only  the  earned  portion  of  the  royalty  should  be  assessed  ; 


1  Root  v.  Railway  Co.  105  U.  S.  1884. 

189,  1881.  6  16  Statutes  at  Large,  Ch.  230, 

2  Revised  Statutes,  Section  4921.  Sec.  55,  p.  206. 

3  Eraigh  v.  Railroad  Co.  6  Fed.  '  16  Statutes  at  Large,  Ch.  230, 
Rep.  283,  1881.  Sec.  Ill,  p.  216;  Union  Paper  Bag 

4  Marsh  v.  Seymour,  97  U.  S.  348,  Machine  Co.  ®.  Newell,  11  Blatch. 
1877.  383,  1873. 

5  Star  Salt  Caster  Co.  v.  Crossman,  •  Bancroft  v.  Acton,  7  Blatch.  506, 
4  Bann.  &  Ard.  566,  1879;   Child  v.  1870;  Locomotive  Safety  Truck  Co. 
Iron  Works,  19  Fed.  Rep.  259,  1884;  v.  Pennsylvania  Railroad  Co.  2  Fed. 
Simpson  v.  Davis,  22  Fed.  Rep,  444,  Rep.  682,  1880. 


CHAP.  XX.]  ACTIONS   IX    EQUITY.  429 

for  if  the  royalty  assessed  is  one  which  covers  the  future 
life  of  the  patent,  its  recovery  would  authorize  a  contin- 
uance of  the  defendant's  doings,  and  thus  defeat  an  injunc- 
tion, and  perhaps  oust  the  jurisdiction  of  equity,  and  so 
eventuate  in  a  reversal  of  the  decree  by  the  Supreme  Court.1 

§  574.  The  complainant  in  an  action  in  equity  for  an  in- 
fringement of  a  patent  may  be  the  holder  of  the  complete 
title  to  that  patent  in  the  territory  where  the  infringement 
occurred.  Where  the  legal  title  resides  in  one  person  and 
the  equitable  title  in  another,  both  should  generally  join  in 
such  an  action.'  But  the  holder  of  the  legal  title  may  be 
dispensed  with  as  co-complainant,  where  the  circumstances 
of  the  case  are  such  that  a  decree  against  the  equitable 
owner  would  clearly  be  pleaclable  against  the  holder  of  the 
legal  title,3  and  the  holder  of  an  equitable  title  may  be  dis- 
pensed with,  where  his  interest  is  confined  to  a  share  of 
the  proceeds  of  the  patent.4  Where  an  equitable  owner 
brings  an  action  in  equity  in  the  name  of  the  holder  of  the 
legal  title  alone,  the  defendant  may,  by  means  of  a  motion 
to  the  court,  compel  the  equitable  owner  to  become  a  co- 
complainant  in  his  own  name.5  But  where  a  defendant 
moves  to  make  a  stranger  to  a  suit,  co-complainant  therein, 
on  the  ground  that  he  has  an  equitable  interest  in  the 
matter  involved,  the  motion  will  be  overruled  if  the  person, 
so  sought  to  be  brought  in,  files  in  the  case  a  disclaimer  of 
all  interest  in  the  subject  of  the  litigation." 

§  575.  The  defendant  in  an  action  in  equity  for  an  in- 
fringement of  a  patent,  may  generally  be  any  person  or  pri- 
vate corporation  connected  with  that  infringement.  Ques- 
tions relevant  to  the  liability  of  public  corporations  to  such 
actions,  and  relevant  to  the  respective  liability  of  joint  iu- 


1  Bragg  r.  City  of  Stockton,  27  4  Rude  v.  Wescott,  129  U.  8. 

Fed.  Rep.  509,  1886.  1889. 

*  Stimpson  v.  Rogers,   4  Blatch.  *  Patterson  v.  Stapler,  7  Fed.  Rep. 

336,  1859.  210,  1881. 

3  Littlefield  t>.  Perry,  21  Wallace,  •  Graham  t>.  Mfg.  Co.  11  Fed.  Rep. 

222,  1874.  148.  1880. 


430  ACTIONS  IN   EQUITY.  [CHAP.  XX. 

f ringers  when  sued  in  equity,  and  indeed  relevant  to  numer- 
ous points  in  the  subject  of  parties,  are  explained  and 
answered  in  the  chapter  on  courts  parties  and  causes  :  the 
seventeenth  chapter  of  this  book. 

§  576.  An  original  bill  in  an  action  in  equity,  for  an  in- 
fringement of  a  patent,  properly  consists  of  six  parts :  1. 
The  title  of  the  court.  2.  The  introduction.  3.  The  stat- 
ing part.  4.  The  prayer  for  relief.  5.  The  interrogating 
part.  •  6.  The  prayer  for  process.  Anciently  it  was  the 
custom  to  insert  in  all  original  bills  in  equity,  three  addi- 
tional parts :  the  confederacy  part,  the  charging  part,  and 
the  jurisdiction  part.  But  these  are  no  longer  required  in 
United  States  courts.1  The  confederacy  part,  if  used  when 
only  one  person  has  infringed  and  is  sued,  is  entirely  out  of 
place ;  and  even  where  the  bill  is  filed  against  joint  in- 
fringers,  such  a  part  is  still  entirely  useless.  The  charg- 
ing part  is  also  unnecessary,  because  the  complainant  is 
entitled  to  amend  his  bill,  if  the  answer  renders  it  neces- 
sary for  him  to  plead  specially  to  any  defence  it  contains.4 
And  such  a  part  is  objectionable,  because  it  notifies  the  de- 
fendant of  the  complainant's  reply  to  the  defendant's  defence, 
and  thus  enables  the  latter  to  concert  his  answer  with  more 
c-raftiness  than  he  otherwise  could.  And  the  jurisdiction 
part  is  useless,  because,  if  the  facts  stated  in  the  bill  do  not 
give  equity  jurisdiction,  the  fault  cannot  be  cured  by  alleg- 
ing that  they  do ;  and  if  those  facts  do  lay  a  foundation  for 
jurisdiction  in  equity,  they  will  speak  for  themselves,  and 
will  require  no  label  such  as  was  anciently  tacked  to  them 
in  the  form  of  a  jurisdiction  part.  That  part  of  an  ancient 
bill  in  equity  originated  in  England  when  the  chancellors 
were  priests  and  not  lawyers,  and  when  they  therefore  re- 
quired to  be  told  that  the  common  law  could  not  give  the 
relief  prayed  for  in  the  bill.  Some  pleaders  still  insert  one 
or  all  of  these  three  ancient  parts  in  a  bill  in  equity,  but 
neither  of  them  can  have  any  beneficial  effect  upon  the 
cause,  and  all  of  them  are  better  omitted  than  used. 

1  Rules  of  Practice  for  the  Courts      Rule  21. 
of  Equity   of    the   United   States,          2  Equity  Rule  45. 


CHAP.  XX.]  ACTIONS  IN   EQUITY.  431 

§  577.  The  title  of  the  court,  at  the  beginning  of  a  bill, 
should  be  in  the  same  form  as  at  the  beginning  of  a  decla- 
ration.1 It  is  technically  unscientific  to  entitle  a  bill  in  the 
name  of  the  case,  because  until  the  bill  is  filed  there  is  no 
such  case  pending.  But  such  a  title  is  convenient,  in  order 
to  show  at  a  glance  who  are  the  parties ;  and  convenience 
may  properly  outweigh  technical  nicety.  It  is  therefore 
exceptional  to  see  a  bill  that  is  not  entitled  in  the  name  of 
the  case. 

§  578.  The  form  of  the  introductory  part  is  prescribed  by 
the  Supreme  Court."  It  contains  a  formal  address  to  the 
judges  of  the  court  in  which  the  bill  is  to  be  filed,  together 
with  the  names  and  citizenship  of  the  parties. 

§  579.  The  stating  part  of  a  bill  in  equity,  though  differ- 
ing in  form  from  the  statement  of  the  cause  of  action  in  a 
declaration  at  law,  agrees  with  the  latter  in  substance, 
except  in  the  following  particulars :  It  must  contain  such  a 
description  of  the  patented  invention  as  will  apprise  the 
court  of  the  particulars  in  which  it  consists,  or  it  must 
make  profert  of  the  letters  patent  upon  which  it  is  based.3 
It  may  state  infringements  which  were  committed  before 
the  complainant  obtained  his  title,  provided  that  title,  when 
obtained,  covered  the  right  of  action  for  those  infringements. 
It  need  not  aver  that  any  damage  was  incurred  by  the  com- 
plainant, if  the  action  is  brought  for  an  injunction  only,  or 
for  an  injunction  and  an  account  of  the  defendant's  profits. 
Where  the  bill  prays  for  a  preliminary  injunction,  its  stat- 
ing part  must  set  forth  one  or  more  of  the  grounds  for  that 
relief,  which  are  explained  in  the  chapter  on  injunctions;4 
and  when  profits  are  sought  to  be  recovered,  it  must  plainly 
aver  that  profits  were  realized  by  the  defendant  on  account 


1  Section  422  of  this  book.  Telephone  Co.  84  Fed.  Rep.  803, 

8  Equity  Rule  20.  1888. 

8  Post  v.  Hardware  Co.  25  Fed.          4  Parker  v.  Brant,  1  Fisher,  58, 

Rep.  905,  1885 ;  Bogart  «.  Hinds,  25  1850  ;  American  Bell  Telephone  Co. 

Fed.  Rep.  484, 1885;  Wise  v.  Railroad  v.  Southern  Telephone  Co.  84  Fed. 

Co.  33  Fed.  Rep.  277,  1888 ;  Ameri-  Rep.  803,  1888. 
can  Bell  Telephone  Co.  v.  Southern 


432  ACTIONS   IN   EQUITY.  [CHAP.   XX. 

of  the  stated  infringement.  This  last  allegation  has  here- 
tofore been  sometimes  omitted  from  bills  in  patent  cases, 
but  the  omission  would  always  have  been  a  fatal  one,  if  the 
defendants  had  availed  themselves  of  it.  The  necessity  for 
such  an  allegation  follows  from  the  rule  of  patent  law  that 
where  a  particular  infringer  made  no  profits  from  his  in- 
fringement, no  profits  can  be  recovered  from  him ;'  and  from 
the  rule  of  equity  pleading,  that  every  fact  which  is  neces- 
sary to  entitle  a  complainant  to  the  relief  for  which  he  prays, 
must  be  distinctly  and  expressly  averred  in  the  stating  part 
of  his  bill.2 

§  580.  The  prayer  for  relief  should  be  both  special  and 
general.3  The  special  part  should  ask  for  a  preliminary  in- 
junction, and  for  a  permanent  injunction,  and  for  an  ac- 
count of  the  defendant's  profits,  and  for  an  assessment  of 
the  complainant's  damages,  and  for  an  increase  of  those 
damages,  and  for  costs ;  or  for  as  many  of  those  kinds  of 
relief  as  the  complainant  hopes  to  obtain  in  the  action. 
The  prayer  for  general  relief  should  be  in  the  ordinary  form 
of  prayers  of  that  kind. 

§  581.  The  form  of  the  interrogating  part  is-  prescribed 
by  the  Supreme  Court.4  That  part  is  designed  to  secure 
from  the  defendant  such  admissions  or  statements  as  will 
obviate  the  necessity  for  evidence  to  support  those  alle- 
gations of  the  bill  which  relate  to  his  doings.  The  inter- 
rogatories must  be  divided  from  each  other,  and  consecu- 
tively numbered,  and  a  note  must  be  put  at  the  foot  of  the 
bill  specifying  which  of  those  numbered  interrogatories 
each  defendant  is  required  to  answer.6  Where  the  com- 
plainant in  his  bill  waives  the  oath*  which  otherwise  the 
defendant  is  entitled  to  make  to  his  answer,  or  if  he  re- 
quires such  an  oath  to  be  made  only  to  the  answer  of  cer- 
tain specified  interrogatories  ;  the  answer  of  the  defendant, 


1  Elizabeth  «.  Pavement  Co.  97  3  Equity  Rule  21. 
U.  S.  126,  1877.  4  Equity  Rule  43. 

2  Wright  v.  Dame,  22  Pickering  8  Equity  Rules  41  and  42. 
(Mass.),  59,  1839. 


CHAP.  XX.]  ACTIONS   IN    EQUITY.  433 

though  it  is  in  fact  under  oath,  is  not  evidence  in  his  favor 
on  any  point  not  covered  by  such  specified  interrogatories ; 
unless  the  case  is  heard  on  bill  and  answer  only.1 

§  582.  The  prayer  for  process  must  contain  the  names  of 
all  the  defendants  who  are  mentioned  in  the  introductory 
part  of  the  bill,  and  if  any  of  them  are  known  to  be  minors, 
or  otherwise  under  guardianship,  that  fact  must  be  stated 
in  the  prayer  for  process.2 

§  583.  The  bill  must  be  signed  by  counsel,  and  by  a 
solicitor  of  the  court  in  which  it  is  filed.'  But  if  the  at- 
torney of  the  complainant  is  not  only  counsel  in  Federal 
courts  generally,  but  also  is  solicitor  in  the  particular  court 
in  which  the  bill  is  filed,  his  signature  will  suffice  in  both 
capacities. 

§  584.  An  oath  of  the  truth  of  the  bill  must  be  appended 
to  such  a  document,  if  it  prays  for  an  injunction.4  Such  an 
oath  is  to  be  made  by  the  complainant,  unless  he  is  in  such 
a  situation  as  to  be  unable  to  make  it,  in  which  case  it  may 
be  made  by  his  agent  conversant  with  the  facts.6  Where 
the  complainant  is  a  corporation,  the  bill  may  be  verified 
by  any  officer  of  the  corporation  who  knows  it  to  be  true ; 
or  if  no  such  officer  possesses  that  knowledge,  it  may  be 
sworn  to  by  any  agent  or  attorney  who  does."  Where  there 
is  a  plurality  of  complainants,  the  bill  may  be  sufficiently 
verified  by  the  oath  of  one  of  them.7  If  the  bill  prays  for 
a  preliminary  injunction,  and  if  its  affiant  can  swear  only 
on  information  and  belief,  to  the  defendant's  doings,  and 
to  their  character  as  infringements,  the  application  should 
be  fortified  by  affidavits  of  persons  who  know  what  the  de- 
fendant has  done,  and  by  affidavits  of  experts  who  can  in- 
telligently testify  to  the  character  of  those  doings,  as  com- 


1  Equity  Rule  41.  bury  &  Minot,  124,  1847. 

8  Equity  Rule  23.  '  Bank  of  Orleans  v.  Skinuer,  9 

3  Equity  Rule  24.  Paige  (N.  Y.),  305,  1841. 

4  Rogers  v.  Abbot,  4  Washington,  T  Goodyear  t>.  Allyn,  6  Blatch.  33, 
514,  1825.  1868. 

6  Woodworth  v.  Edwards,  3  Wood- 


434  ACTIONS   IN    EQUITY.  [CHAP.   XX. 

pared  with  what  appears  to  be  covered  by  the  complainant's 
patent.  Where  the  complainant  can  positively  swear  to 
part  of  the  allegations  of  his  bill,  and  can  swear  to  the 
residue  only  on  information  and  belief,  the  bill  should  state 
the  first  class  of  facts  positively,  and  the  second  class  on 
information  and  belief  alone  ;  and  the  oath  should  clearly 
discriminate  between  the  two  classes  in  that  behalf.  It  is 
not  sufficient  for  the  oath  to  state  that  the  material  aver- 
ments of  the  bill  are  true  ; '  nor  to  state  that  those  allega- 
tions are  true  which  render  an  injunction  necessary  and 
proper ; 2  because  such  a  form  of  oath  leaves  it  uncertain 
which  allegations  the  affiant  had  in  mind.  But  positive 
oaths  ought  to  be  based  on  positive  knowledge.  It  is  much 
to  be  feared  that  many  persons  make  affidavits  to  bills  and 
other  papers  without  sufficient  reflection  upon  the  state- 
ments they  contain,  or  upon  the  nature  of  an  oath,  or  upon 
the  pains  and  penalties  of  perjury.  The  fault  is  largely 
due  to  the  attorneys  who  write  the  papers.  The  better 
lawyers  will  guard  the  conscience  of  the  client  at  this  point, 
while  the  inferior  ones  are  sometimes  more  apt  to  mislead 
than  to  protect  it.  Affidavits  to  bills,  and  indeed  all  other 
affidavits  to  be  used  in  any  civil  cause,  in  any  circuit  or  dis- 
trict court  of  the  United  States,  may  be  taken  before  a  com- 
missioner of  the  circuit  court  for  the  district ; 3  or  before 
any  n6tary  public  of  either  of  the  States  or  Territories  or  of ' 
the  District  of  Columbia.4 

§  585.  A  bill  to  perpetuate  testimony  tending  to  show  a 
particular  patent  to  be  void,  may  be  filed  and  prosecuted 
in  any  United  States  Circuit  Court.5 

There  was  once  a  curious  bill  filed  by  a  hypothetical  in- 
f ringer  against  a  patentee,  stating  that  the  complainant  did 


1  Sauvinet  v.  Poupono,  14  Louisi-  206. 

ana,  87,  1839.  5  Revised   Statutes,   Section    866; 

2  Hebert  v.  Joly,  5  Louisiana,  50,  New  York  &  Baltimore  Coffee  Pol- 
1832.  ishing  Co.  v.  New  York  Coffee  Pol 

3  Revised  Statutes,  Section  945.  ishing  Co.  9  Fed.  Rep.  578,  1881, 11 

4  19  Statutes  at  Large,  Ch.  304,  p.  Fed.  Rep.  813,  1882. 


CHAP.  XX.]  ACTIONS   IN   EQUITY.  435 

not  infringe  the  defendant's  patent,  and  praying  the  court 
to  enter  a  decree  to  that  effect.1  The  counsel  who  argued 
in  behalf  of  the  bill  were  men  of  great  experience  in  the 
law,  but  their  views  were  overruled  by  Justice  HUNT,  who 
heard  the  case  on  the  circuit.  He  held  that  no  such  ac- 
tion, as  that  attempted,  was  provided  for  by  any  statute,  or 
authorized  by  any  principle  of  equity  jurisprudence. 

Several  bills  have  lately  been  filed,  and  other  proceedings 
instituted,  in  equity,  to  restrain  patentees  from  publishing 
statements  favorable  to  their  patents,  and  unfavorable  to 
alleged  infringers  thereof,  and  in  other  cases  to  restrain 
alleged  infringers  of  patents  from  publishing  statements  un- 
favorable to  those  patents,  and  favorable  to  such  alleged 
infringers  ;  and  several  inharmonious  decisions  have  been 
made  in  such  cases.2  But  any  Federal  court  that  issues 
an  injunction  to  restrain  a  person  from  publishing  such  a 
statement,  will  be  exercising,  without  statutory  authority, 
a  power  which  the  constitution  prohibits  Congress  to  pro- 
vide for  by  statute.^  Such  a  law  would  plainly  abridge  the 
freedom  of  the  press,  and  if  Congress  were  to  make  such  a 
law,  the  Federal  courts  would  have  no  lawful  power  to 
administer  it,  because  it  would  be  clearly  unconstitutional ; 
and  it  is  certain  that  those  courts  cannot  lawfully  exercise 
the  double  function  of  making  and  administering  an  uncon- 
stitutional law. 

§  586.  Amendments  to  bills  may  be  made  as  a  matter  of 
course,  and  without  costs,  at  any  time  before  a  copy  has 
been  taken  out  of  the  clerk's  office  ;  and  may  be  made  as  of 
course  with  costs,  after  a  copy  has  been  taken  out,  and  be- 
fore any  plea,  answer,  or  demurrer  has  been  filed.4  After  an 
answer  or  plea,  or  demurrer  is  put  in,  and  before  replica- 

1  Celluloid  Mfg.  Co.  «.  Vulcanite  Curran  v.  Car.  Co.  32  Fed.  Rep.  835, 

Co.  13  Blatch.  375,  1876.  1887:  Emack  «.  Kane,  34  Fed.  Rep. 

*  Chase  «.   Tuttle,   27  Fed.  Rep.  46,  1888. 

110,  1886;    Tuttle  «.  Matthews,  28  3  First  Amendment  to  the  Con- 

Fed.  Rep.  98,  1886;  Kidd  v.  Horry,  stitution. 

28  Fed.  Rep.  773,  1886;  Ide  «.  En-  4  Equity  Rule  28. 
gine  Co.   31  Fed.  Rep.   901,  1887; 


436  ACTIONS   IN   EQUITY.  [CHAP.  XX. 

tion,  the  complainant  may,  upon  motion,  without  notice, 
obtain  an  order  from  any  judge  of  the  court  to  amend  his 
bill  on  or  before  the  next  succeeding  rule  day,  upon  pay- 
ment of  costs,  or  without  payment  of  costs,  as  the  judge 
may  in  his  discretion  direct.1  After  a  replication  is  filed, 
and  before  the  hearing  of  the  case,  the  bill  cannot  be 
amended  except  upon  a  special  order  of  the  judge  of  the 
court,  upon  motion  or  petition,  after  due  notice  to  the  other 
party,  and  upon  proof  by  affidavit  that  the  application  is 
not  made  for  the  purpose  of  vexation  or  delay,  and  that  the 
matter  of  the  proposed  amendment  is  material,  and  could 
not  with  reasonable  diligence  have  sooner  been  introduced 
into  the  bill,  and  upon  the  plaintiff  submitting  to  such 
other  terms  as  may  be  imposed  by  the  judge  for  speeding 
the  cause.4  Amendments  applied  for  at  or  after  the  hear- 
ing of  a  case  are  not  regulated  by  the  Equity  Rules,  but  are 
allowed  or  refused,  according  to  the  sound  discretion  of 
the  court.8.  But  that  discretion  is  governed  by  precedents, 
and  those  precedents  indicate  that  amendments,  at  or  after 
the  hearing,  will  be  allowed  only  where  the  bill  is  found  to 
be  defective  in  proper  parties,  or  in  its  prayer  for  relief,  or 
in  the  omission  or  misstatement  of  some  fact  or  circum- 
stance connected  with  the  substance  of  the  case,  but  not 
forming  the  substance  itself,  or  where  it  is  necessary  for  the 
complainant  to  take  issue  with  new  matter  in  the  answer.* 
Where  a  litigation  has  been  conducted  precisely  as  it  would 
have  been  if  the  proper  amendment  had  been  made  before 
any  plea,  answer,  or  demurrer  was  filed,  the  court  will  allow 
that  amendment  to  be  filed  even  after  the  hearing,  and  thus 
make  the  pleadings  conform  to  what  the  course  of  the  liti- 
gation assumed  them  to  be.8 


1  Equity  Rule  29.  5  The  Tremolo  Patent,   23  Wal- 

*  Equity  Rule  29.  lace,  527,  1874;  Vattier  v.  Hinde,  7 

3  Neale  v.   Neales,   9  Wallace,  9,  Peters,  273,  1833;  Duponti  v.  Mussy, 
1869.  4  Washington,  128,  1821;  New  York 

4  Shields  v.  Barrow,  17  Howard,  Sugar  Co.  v.  Sugar  Co.  20  Fed.  Rep. 
144,  1854.  505,  1884. 


CHAP.  XX.]  ACTIONS  IX   EQUITY.  437 

§  587.  A  bill  needs  amendment  when  the  defendant's  de- 
murrer, plea,  or  answer  points  out  a  material  fault  therein, 
or  when  the  complainant  otherwise  discovers  a  material 
error  or  omission  which  may  be  cured,  or  when  the  defend- 
ant's plea  or  answer  contains  statements  to  which  it  is 
necessary  to  plead  by  way  of  confession  and  avoidance.1 
No  reply  by  way  of  confession  and  avoidance  can  be  made 
in  a  replication  in  equity."  "Where  the  plea  or  answer  sets 
up  new  matter,  to  which  the  complainant  wishes  to  reply 
by  way  of  traverse,  the  general  replication  is  the  proper 
pleading  to  file  for  that  purpose.1 

§  588.  Defences  may  be  made  to  a  bill  in  equity  for  in- 
fringement of  a  patent,  by  a  demurrer,  or  by  a  plea,  or  by 
an  answer ;  or  by  a  demurrer  to  part,  and  a  plea  to  another 
part,  and  an  answer  to  the  residue  ;  *  or  by  a  demurrer  to 
part,  and  a  plea  to  the  residue  ;  or  by  a  demurrer  to  a  part, 
and  an  answer  to  the  residue  ;  or  by  a  plea  to  a  part,  and  an 
answer  to  the  residue.5 

The  nature  and  operation  of  demurrers  and  answers  in 
equity  practice  are  so  well  understood  by  the  profession, 
that  nothing  need  be  said  about  them  in  this  book,  further 
than  to  show  the  applicability  of  each  of  those  forms  of 
pleading  to  the  various  defences  which  belong  to  patent 
litigation.  But  defences  by  plea  may  bear  a  longer  review, 
because  they  have  largely  gone  out  of  use  in  the  Federal 
courts  and  their  principles  been  partly  forgotten  l?y  the 
members  of  the  bar,  since  the  Equity  Rules  authorized 
nearly  every  defence  to  be  made  in  an  answer  that  formerly 
required  a  plea  for  its  interposition."  But  those  rules  do 
not  authorize  any  defendant  to  make  a  particular  defence 
in  a  plea,  and  if  unsuccessful  there,  to  make  it  over  again  in 
an  answer.7  Such  a  plan,  if  allowed,  would  enable  a  de- 


1  Wilson  v.  Stolley,  4   McLean,          *  Story's  Equity  Pleading,  Section 

275,  1847.  437. 

»  Equity  Rule  45.  '  Equity  Rule  39. 

3  Equity  Rule  66.  '  Hubbell  t>.  De  Laud,   14  Fed. 

4  Equity  Rule  32.  Rep.  475,  1882. 


438  ACTIONS  IN  EQUITY.  [CHAP.  XX. 

fendant  whose  plea  is  overruled  as  stating  no  defence  at 
law,  to  argue  that  question  again  on  the  final  hearing ;  and 
it  would  enable  a  defendant,  whose  plea  is  proved  to  be 
false  in  fact,  to  contest  that  issue  again  on  new  testimony 
taken  in  pursuance  of  an  answer.  Though  pleas  in  bar  are 
not  necessary  in  equity  cases  in  the  Federal  courts,  except 
under  rare  circumstances,  they  may  sometimes  be  made 
useful  in  saving  time,  labor,  costs,  and  expense.  It  is,  on 
these  accounts,  expedient  to  remind  the  reader  of  the  gen- 
eral nature  and  operation  of  those  pleadings,  before  ex- 
plaining their  special  application  to  actions  in  equity  for 
infringements  of  patents. 

§  589.  A  plea  in  equity  is  a  sworn1  pleading,  which  alleges 
that  some  one  fact,  not  stated  in  the  bill,  is  true ;  or  that 
some  one  statement  of  fact  in  the  bill,  is  not  true  ;  or  that 
some  one  fact,  which  the  bill  states  is  not  a  fact,  is  a  fact 
nevertheless.  A  plea  of  the  first  kind  sets  up  new  matter 
by  way  of  confession  and  avoidance,  and  is  properly  named 
an  affirmative  plea.2  This  is  the  only  sort  of  plea  in  equity 
which  was  recognized  in  the  time  of  Lord  BACON. a  A  plea 
of  the  second  kind  traverses  some  one  statement  of  fact  in 
the  bill,  and  is  therefore  properly  called  a  negative  plea.4 
This  sort  of  plea  was  established  by  Lord  THUKLOW.  and 
thereafter  became  a  fully  recognized  part  of  equity  plead- 
ing in  England  and  in  the  United  States.5  A  plea  of  the 
third  kind  states  some  fact  to  be  true  which  the  bill  seeks 
to  impeach.6  It  is  similar  to  an  affirmative  plea  in  respect 
that  it  sets  up  matter  outside  of  that  upon  which  the  bill  is 
based  ;  and  it  is  similar  to  a  negative  plea,  in  that  it  contra- 
dicts some  one  statement  of  fact  in  the  bill.  It  may  there- 
fore be  properly  named  a  composite  plea. 

§  590.  After  a  defendant  files  a  plea  to  a  bill  in  equity, 

1  Equity  Rule  31.  1,  Ch.  XV.  Section  1. 

2  Daniell's  Chancery  Practice,  Vol.  5  Story's  Equity  Pleading,  Section 
1,  Ch.  XV.  Section  1.  668. 

3  Beame's  General  Orders  of  the  6  Daniell's  Chancery  Practice,  Vol. 
High  Court  of  Chancery,  26.  1,  Ch.  XV.  Section  1. 

4  Dauiell's  Chancery  Practice,  Vol. 


CHAP.  XX.]  ACTIONS  IN   EQUITY.  439 

the  complainant  should  satisfy  himself  whether  it  states  a 
good  defence  to  the  bill,  or  to  that  part  of  the  bill  to  which 
it  refers,  and  should  ascertain  whether  it  is  true  in  point  of 
fact.  If  he  is  sure  that  he  can  prove  it  to  be  false,  he  should 
take  issue  upon  it '  by  filing  a  replication."  If  he  has  any 
ground  for  fear  that  the  plea  is  true  in  fact,  and  any  ground 
for  hope  that  it  is  bad  in  law,  his  true  course  is  to  set  the 
plea  down  for  argument ; s  which  setting  down  is  equivalent 
to  a  demurrer  to  the  plea.4  If,  on  the  argument,  the  plea 
is  held  to  state  no  fact  which  constitutes  a  defence  to  the 
bill,  or  to  any  part  thereof,  it  will  be  overruled,  and  the  de- 
fendant will  be  permitted  to  file  an  answer  setting  up  what- 
ever other  defences  he  can.*  But  if  the  plea  is  held  on  the 
argument  to  state  a  good  defence  to  the  bill,  or  to  that  part 
of  the  bill  to  which  it  applies,  it  will  be  allowed,  and  there- 
upon the  complainant  may  file  a  replication.'  After  a  rep- 
lication is  filed  to  a  plea,  the  fate  of  the  entire  bill,  or  of 
that  part  thereof  to  which  the  plea  applies,  will  depend 
upon  the  trial  of  the  issue  of  fact  thus  raised  by  the  parties. 
If  the  plea  is  proved  to  be  true,  the  bill  will  be  dismissed, 
if  the  plea  applies  to  the  whole  bill ; 7  or  if  it  applies  to  a 
part  only,  the  bill  will  be  defeated  as  to  that  part.8  But  if 
the  plea  is  proved  to  be  false,  the  complainant  may  have  a 
decree  without  any  further  proceedings.9  Only  one  defence 
can  be  made  to  a  bill  in  a  plea,  unless  the  court,  in  order  to 
avoid  a  special  inconvenience,  gives  a  special  permission  to 

1  Equity  Rule  33.  472,  1821 ;  Rhode  Island  v.  Massa- 

2  Daniell's  Chancery  Practice,  Vol.      chusetts,  14  Peters,  257,  1840  ;  My- 
1,  Ch.  XV.  Section  V.  ers  v.   Dorr,   13  Blatch.  26,  1870; 

3  Equity  Rule  33.  Theberath  v.  Trimming  Co.  5  Baun. 
4Davison's  Ex'rs  v.  Johnson,  16     &Ard.  585,1880;  Cottier  Kreraentz, 

New  Jersey  Equity,  113, 1863;  Kora  25  Fed.  Rep.  495,  1885;  Birdseye  t». 

V.  Wiebusch,  33  Fed.  Rep.  51, 1887;  Heilner,  26  Fed.  Rep.  147, 18S5. 

Burrell  v.    Hackley,  35  Fed.  Rep.  8  Equity  Rule  33. 

834,  1888.  *  Story 's  Equity  Pleading,  Section 

*  Equity  Rule  34.  697  ;    Darnell's  Chancery  Practice, 

•  Story's  Equity  Pleading,  Section  Vol.  1,  Ch.  XV.  Section  V.;  The- 
C97  ;  Daniell's  Chancery  Practice,  berath  v.  Trimming  Co.  5  Bann.  & 
Vol.  1,  Ch.  XV.  Section  V.  Ard.  584,  1880. 

1  Hughes  v.   Blake,   6  Wheaton, 


440  ACTIONS   IN   EQUITY.  [CHAP.  XX. 

a  defendant  to  make  a  plurality  of  defences  in  that  method 
of  pleading.1  The  rules  of  English  equity  pleading  allowed 
a  defendant  whose  first  plea  was  overruled  to  set  up  in  a 
new  plea  any  other  defence  to  which  a  plea  was  suitable.8 
But  in  the  United  States  courts  no  successive  pleas  are  per- 
mitted to  be  filed,  for  after  any  plea  has  been  overruled, 
the  defendant,  if  he  has  other  defences  to  interpose,  must 
interpose  them  in  an  answer.3  This  outline  of  the  princi- 
ples of  pleas  in  equity,  should  be  kept  in  mind  by  the  reader 
while  perusing  sundry  of  the  sections  which  follow. 

§  591.  The  twenty-seven  defences  which  may  be  made  to 
actions  at  law  for  infringements  of  patents,4  may  all  be  made 
to  actions  in  equity  based  on  such  causes  ;  and  the  latter  ac- 
tions are  also  liable  to  two  other  defences,  to  which  actions 
at  law  are  not  subject.  These  are  non-jurisdiction  of  equity, 
and  laches.  It  is  convenient  first  to  explain  the  facts  which 
may  support  each  of  these  two  defences,  and  to  state  the 
various  methods  in  which  each  may  be  interposed,  and 
afterward  to  review  the  twenty-seven  defences  in  their  order, 
and  to  explain  wherein  any  of  them  differ  in  their  operation 
in  equity,  from  their  operation  at  law,  and  to  state  what 
forms  of  pleading  are  suitable  to  each,  under  the  varying 
circumstances  of  patent  litigation. 

§  592.  Non-jurisdiction  in  equity  is  a  defence  which  will 
succeed  in  any  infringement  case,  unless  an  injunction  is 
granted,  or  at  least  rightfully  prayed  for  in  that  case,  or 
unless  some  impediment  prevents  a  resort  to  remedies  purely 
legal,  or  unless  the  circumstances  of  the  case  render  the 
remedy  obtainable  by  an  action  at  law,  difficult,  inadequate, 
or  incomplete.6  But  where  a  bill  is  filed  before  the  expira- 
tion of  the  patent  upon  which  it  is  based,  and  where  it  truly 
states  a  proper  case  for  an  injunction,  and  contains  a  proper 

1  Story's  Equity  Pleading,  Section  2  DanielPs  Chancery  Practice, Vol. 

657  ;    Wheeler    ®.    McCormick,    S  1,  Ch.  XV.  Section  VIII. 

Blatch.  267,  1871;  Noyes  ®.Willard,  3  Equity  Rule  34. 

1  Woods,  187,  1871;   Giant  Powder  4  Section  440  of  this  book. 

Co.  v.  Nitro  Powder  Co.  19  Fed.  6  Root  v.  Railroad  Co.  105  U.  S. 

Rep.  510,  1884.  189,  1881. 


CHAP.  XX.]  ACTIONS  IN  EQUITY.  441 

prayer  for  that  relief,  equity  has  jurisdiction,  and  will  retain 
it  to  the  end  of  the  suit,  even  if,  on  account  of  the  delays  or 
errors  which  are  incident  to  litigation,  no  injunction  is  ever 
granted  in  the  case.1 

The  conditions  and  limitations  of  this  rule  are  to  be  care- 
fully noted  .by  the  practitioner.  1.  Where  a  bill  untruly 
states  a  proper  case  for  an  injunction,  and  contains  a  prayer 
for  that  relief,  the  jurisdiction  of  equity  will  lapse  and  the 
bill  be  dismissed,  whenever  it  is  shown  to  have  been  untrue 
in  respect  of  those  of  its  statements  upon  which  the  prayer 
for  an  injunction  is  based.3  2.  Where  a  bill  states  no  proper 
case  for  an  injunction,  but  contains  a  prayer  for  such  a  writ, 
the  jurisdiction  of  equity  will  not  attach  at  all,  and  the  bill 
will  be  dismissed  whenever  its  character  is  brought  to  the 
attention  of  the  court.8  3.  Where  a  bill  is  filed  so  shortly 
before  the  expiration  of  the  patent  upon  which  it  is  based, 
that  no  motion  for  an  injunction  can  be  regularly  notified 
to  the  defendant  and  heard  by  the  court  till  after  that  ex- 
piration, the  bill  will  be  dismissed  whenever  the  court  learns 
that  no  injunction  can  lawfully  be  granted.4 

§  593.  The  case  of  Eoot  v.  Eailway  Co.  omitted  to  clearly 
state  what  exceptional  facts  will  give  equity  jurisdiction, 
independent  of  any  injunction  or  prayer  for  injunction. 
What  the  court  said  on  that  subject  was  said  in  the  follow- 
ing phraseology  :  "  Grounds  of  equitable  relief  may  arise, 
other  than  by  way  of  injunction,  as  where  the  title  of  the 

1  Clark  c.  Wooster,  119  U.  S  325,  30  Fed.  Rep.  689.  1887;  Kittle  v.  Ro- 

1886;  Beedle  v.  Bennett,  122  U.  S.  gers,  33  Fed.  Rep.  49, 1887  ;  Hohorst 

75,  1886;  Gottfried  v.  Brewing  Co.  v.  Howard,  37  Fed.  Rep.  97,  1888. 
13  Fed.  Rep.  479,  1883;  Gottfried  v.         2  Dowell  v.   Mitchell,  105  U.  S. 

Moerlein,  14  Fed.  Rep.  170,  1882;  430,  1881. 

Forehand  e.  Porter,  15  Fed.  Rep.         *  Campbell  «.  Ward,  12  Fed.  Rep. 

256,  1883  ;  Reay  v.  Raynor,  19  Fed.  loO,  1882  ;   Creamer  v.  Bowers,  80 

Rep.  309,  1884  ;  Adams  v.  Howard,  Fed.  Rep.  185,  1887. 
19  Fed.  Rep.    317,   1884 ;   Dick  «.         4  Clark  «.  Wooster,  119  U.  S 

Struthers,  25  Fed.  Rep.  103,  1885;  1886;  Burdell  v.  Comstock,  15  Fed. 

Adams  «.  Iron  Co.  26  Fed.  Rep.  324,  Rep.  395,  1883  ;  Davis  «.  Smith,  19 

18S6;  Kirk  «.  Du  Bois,  28  Fed.  Rep.  Fed.   Bep.   823,  1884;    Mershon  ». 

460,  1886;  Brooks  v.  Miller,  28  Fed.  Furnace  Co.  24  Fed.  Rep.  741, 1885. 
Rep.  615,  1886  ;  Kittle  v.  De  Graff, 


442  ACTIONS   IN    EQUITY.  [CHAP.  XX. 

complainant  is  equitable  merely,  or  equitable  interposition  is 
necessary  on  account  of  the  impediments  which  prevent  a  re- 
sort to  remedies  purely  legal ;  and  such  an  equity  may  arise 
out  of,  and  inhere  in,  the  nature  of  the  account  itself,  spring- 
ing from  special  and  peculiar  circumstances  which  disable 
the  patentee  from  a  recovery  at  law  altogether,  or  render  his 
remedy  in  a  legal  tribunal  difficult,  inadequate,  and  incom- 
plete ;  and  as  such  cases  cannot  be  defined  more  exactly,  each 
must  rest  upon  its  own  peculiar  circumstances,  as  furnishing 
a  clear  and  satisfactory  ground  of  exception  from  the   gen- 
eral rule."     Before   this   case  was  a  year   old,  the   same 
justice  who  delivered  the  opinion  of  the  Supreme  Court  was 
called  upon  to  deliver  another  in  explanation  thereof.1     In 
the  latter  case  it  was  held  that  grounds  of   equitable  relief 
do  not  arise  "  where  the  title  of  the  complainant  is  equitable 
merely,"  unless  that   fact  constitutes   an  impediment  to  a 
resort  to  remedies  purely  legal,  or  constitutes  a  circumstance 
which  renders  the  remedy  obtained  by  an  action  at  law  diffi- 
cult, inadequate,   or  incomplete.      And   Judge    COLT   has 
decided  that  such  an  equity  does  not  "  arise  out  of,  and  in- 
here in,  the  nature  of  the  account  itself  "  merely  because  the 
account  is  intricate.8 

§  594.  Want  of  jurisdiction  in  equity  may  be  set  up  by  a 
defendant  in  a  demurrer  or  in  an  answer,  but  it  does  not 
really  require  any  pleading  to  sustain  it.  It  may  be  inter- 
posed by  a  motion  at  any  stage  of  the  case  in  the  circuit 
court.3  Even  on  the  hearing  of  an  appeal  in  the  Supreme 
Court,  the  defendant  may  successfully  call  attention  to  it ; 
and  indeed  that  court  may  enforce  that  defence  against  the 
express  waiver  and  request  of  the  defendant.4  But  there  is 
an  advantage  in  making  this  defence  by  demurrer  instead 
of  by  answer,  or  by  a  motion  after  an  answer  ;  for  in  the 


«7o  ill*        ^  Aadrews>  106  U"  S-  3  Spring  ,.   Sewing-MacLine  Co. 

,V  13  Fed.  Rep.  446,  1882. 

^ Lord.  Machine  Co  24Fed.Rep.  4  Hipp  ,  Babin>  J9  Howard 

KB,  1885;  Adams  v.  Iron  Co.  26  Fed.  1856 
Rep.  325,  1886. 


CHAP.   XX.]  ACTIONS   IN    EQUITY.  443 

first  case  the  bill  may  be  dismissed  with  costs,  while  in 
either  of  the  others  no  costs  can  be  recovered,  even  if  the 
defence  is  successful.1 

§  595.  Prior  adjudication  in  an  action  at  law  is  not  neces- 
sary to  give  jurisdiction  to  equity  in  cases  of  infringements 
of  patents,  nor  is  such  an  adjudication  necessary  to  call 
equity  into  activity  in  that  behalf.2  A  circuit  court  may,  in 
its  discretion,  order  a  trial  at  law  in  such  a  case,3  or  order  a 
trial  by  jury  at  its  own  bar,4  in  order  to  inform  the  con- 
science of  the  chancellor  ;  but  no  such  trial  can  be  demanded 
by  either  or  both  of  the  parties  as  an  absolute  right,  for 
courts  of  equity  are  not  only  really,  But  also  technically, 
competent  to  judge  of  questions  of  facts.5 

§  596.  Laches  is  a  defence  which  is  peculiar  to  courts  of 
equity.  It  arises  from  one  of  the  fundamental  maxims 
which  govern  the  administration  of  justice  in  those  courts. 
That  maxim  is  generally  stated  in  the  Latin  language,  and 
in  the  following  words :  Vigilantibus  non  dormientibus  cequitas 
suhvenit.  In  pursuance  of  the  modern  tendency  to  sub- 
stitute English  equivalents  for  Latin  phrases  in  text-writing, 
it  is  well  to  set  down  in  this  place,  a  free  but  sufficiently 
accurate  translation  of  this  maxim  :  Equity  aids  the  vigilant, 
and  not  the  sleeping.  In  pursuance  of  this  maxim,  a  court 
of  equity  sometimes  refuses  its  remedies  because  they  wer.e 
not  invoked  with  diligence,  whether  the  right  sued  upon  is 
old  enough  to  be  barred  by  a  statute  of  limitation  or  not ; 6 
and  whether  the  complainant  or  his  assignor  is  the  party 
who  is  chargeable  with  laches.7  But  delay  to  sue  is  not 
always  laches,  because  it  may  have  resulted  from  the  fact 
that  the  complainant  did  not  know  of  the  infringement  till 

1  Dawes  D.   Taylor,  14  Reporter,  1876. 

180,  1882.  •  Elmendorf  e.  Taylor,  10  Whea- 

'»  McCoy  «.  Nelson,  121  U.  S.  487,  ton,  168,  1825;  Sullivan  «.  Railroad 

1887.  Co.  94  U.  S,  811,  1876;  New  York 

3  Wise  v.  Railway  Co.  33  Fed.  Rep.  Sugar  Co.  v.  Sugar  Co.  24  Fed.  Rep. 
277,  1888.  604,  1885. 

4  18  Statutes  at  Large,  Part  3,  Ch.  7  Kittle  v.  Hall,  29  Fed.  Rep.  511, 
77,  Section  2,  p.  316.  1887. 

5  Cochrane  v.  Deener,  94  U.  S.  780, 


444 


ACTIONS  IN  EQUITY.  [CHAP.  XX. 


long  after  it  began ;  or  from  the  fact  that  he  was  litigating 
a  test  case  under  his  patent  against  another  infringer  dur- 
ing the  time  of  the  delay  ; l  or  it  may  have  occurred  after 
the  infringer  was  warned  to  infringe  no  more,  and  while  the 
patentee  was  preparing  for  action.3  The  first  of  these  cir- 
cumstances excuses  delay,  because  vigilance  does  not  imply 
omniscience,  and  the  second  excuses  delay  because  abstin- 
ence from  vexatious  litigation  is  worthy  to  be  praised  rather 
than  punished  by  a  court  of  equity,  and  the  third  excuses 
delay  because  it  is  neglect,  and  not  patience,  that  constitutes 
laches.  Where  neither  of  these  excuses  can  be  invoked  by 
a  complainant,  he  may  perhaps  avail  himself  of  some  excuse 
arising  out  of  grievous  poverty  or  protracted  sickness. 
How  short  a  delay  will  constitute  laches  in  the  absence  of 
all  special  excuses,  is  a  question  to  which  no  definite  answer 
seems  ever  to  have  been  given.  But  it  is  settled  that  where 
delay  is  without  a  particular  excuse,  less  of  it  is  required  to 
deprive  a  complainant  of  an  account  of  profits,  than  is  re- 
quired to  deprive  him  of  a  permanent  injunction.3  And  a 
right  to  a  preliminary  injunction  will  be  lost  by  a  shorter 
delay  than  would  be  required  to  deprive  a  complainant  of 
the  right  to  an  account  of  profits. 

§  597.  The  defence  of  laches  can  be  made  in  a  demurrer,* 
or  in  an  answer,  or  in  an  argument  on  the  hearing  without 
any  pleading  to  support  it.8  But  a  plea  is  not  appropriate 
for  such  a  defence,  because,  if  the  bill  shows  delay  and  is 
silent  about  excuses  therefor,  the  method  of  a  plea  would 
be  to  state  that  there  is  no  such  excuse,  and  because,  by 
taking  issue  on  such  a  plea,  and  proving  an  excuse,  the 
complainant  could  cut  off  all  other  defences,  and  win  the 

1  Van  Hook®.  Pen dleton,  1  Blatch.          3  McLean  v.  Fleming,  96  U.    S. 
193,  1846;  Green  v.  French,  4  Bann.      257,  1877;  McLaughlin  «.   Railroad 
&  Ard.  171,  1879;  Green  t>.  Barney,       Co.  21  Fed.  Rep.  574,  1884. 

19  Fed.  Rep.  421,   1884;  American  4  Muudy  <p.  Kendall,  23  Fed.  Rep. 

Bell    Telephone    Co.    v.    Southern  591,  1885. 

Telephone  Co.  34  Fed.   Rep.   802,  •  «  Maxwell  c.  Kennedy,  8  Howard, 

1§88.  222,  1850. 

2  Seibert  Oil  Cup  Co.   «.   Lubri-  •  Sullivan  «.  Railroad  Co.  94  U. 
cator  Co.  34  Fed.  Rep.  34,  1888.  S.  811,  1876. 


CHAP.  XX.]  ACTIONS   IN   EQUITY.  445 

cause.  To  guard  against  a  demurrer  based  on  laches,  in  a 
case  where  long  delay  intervened  between  the  infringement 
and  the  filing  of  the  bill,  the  bill  ought  to  state  the  existing 
excuses  for  that  delay;  and  to  guard  against  such  a  defence 
being  started  on  the  hearing,  the  evidence  ought  to  show 
whatever  excuse  the  complainant  can  interpose. 

§  598.  The  first  of  the  twenty-seven  defences  which  are 
known  both  to  actions  at  law  and  actions  in  equity  for  in- 
fringements of  patents,  can  be  made  in  a  demurrer,  where 
the  letters  patent  appear  on  their  face  to  have  been  granted 
for  something  other  than  a  process,  machine,  manufacture, 
composition  of  matter,  or  design,  and  where  the  bill  dis- 
closes that  fault.  But  a  plea  is  never  applicable  to  this 
defence,  because  its  validity  depends  upon  the  construction 
of  the  letters  patent,  and  not  upon  any  matter  of  fact  to 
which  an  oath  would  be  pertinent ;  though  an  answer  is 
always  applicable  thereto,  and  may  join  it  with  other  de- 
fences to  a  patent. 

§  599.  The  second  defence  may  be  made  on  the  hearing 
without  any  pleading,  in  all  cases  where  the  court  will  take 
judicial  notice  of  the  facts  which  show  want  of  invention  ; ' 
and  a  demurrer  will  also  be  sustained  under  the  same  cir- 
cumstances ; *  but  courts  will  not  take  judicial  notice  of  facts 
merely  because  they  are  stated  in  books,3  nor  of  facts 
which  are  not  generally  known,4  nor  of  facts  the  reality  of 
which  is  subject  to  doubt.5  And  where  the  state  of  the  art 
needs  to  be  proved  by  evidence,  in  order  to  show  that  the 
advance  covered  by  the  patent  did  not  amount  to  invention, 
it  is  necessary  to  set  up  the  defence  of  want  of  invention  in 
an  answer.  A  plea  is  not  applicable  to  such  a  case,  be- 

1  Hendy  v.  Iron  Works,  127  U.  S.  New  York  Belting  Co.  v.  Rubber 

375,  1887;  Brown  t>.  Piper,  91  U.  S.  Co.  30  Fed.  Rep.  785,  1887;  West «. 

41,   1875;  Slawson  v.  Railroad  Co-  Rae,  33  Fed.  Rep.  45,  1887. 

107  U.  S.  649,  1882;  Ligowski  Clay  3  Kaolatype    Engraving    Co.    0. 

Pigeon  Co.  v.  Clay  Bird  Co.  34  Fed.  Hoke,  30  Fed.  Rep.  444,  1887. 

Rep.  332,  1888.  4  Eclipse  Mfg.  Co.  v.  Adkins,  36 

1  Dick  v.  Supply  Co.  25  Fed.  Rep.  Fed.  Rep.  554,  1888. 

105,  1885;  Kaolatype  Engraving  Co.  5  Blessing  t>.   Copper  Works,   34 

v.  Hoke,  30  Fed.   Red.   444,  1887;  Fed.  Rep.  753,  1888. 


446 


ACTIONS  IN   EQUITY.  [CHAP.  XX. 


cause  defendants  can  seldom  swear  to  the  state  of  the  art, 
and  even  where  they  can,  they  cannot  plead  resulting  want 
of  invention,  because  that  depends  upon  the  construction  of 
the  patent,  which  is  to  be  made  by  the  court  in  the  light  of 
the  state  of  the  art.  When  interposing  this  defence  in  an 
answer,  it  is  not  necessary  to  state  what  facts  are  intended 
to  be  proved  in  its  support ;  because  those  facts  refer  only 
to  the  state  of  the  art,  and  not  to  novelty.1  The  function 
of  an  answer,  in  respect  of  this  defence,  is  to  notify  the 
complainant  that  the  evidence  of  the  state  of  the  art,  which 
is  taken  by  the  defendant,  will  be  invoked  at  the  hearing  to 
show  want  of  invention,  and  not  merely  to  narrow  the  pat- 
ent and  thus  show  non-infringement. 

§  600.  The  third  defence  cannot  be  set  up  in  a  plea,  be- 
cause the  statute  expressly  provides  that  it  shall  be  set  up 
in  an  answer.2  Nor  can  it  be  based  on  such  a  notice  as  will 
effect  the  purpose  in  an  action  at  law.3  It  requires  an  an- 
swer for  its  embodiment ; 4  and  that  answer  must  state  the 
same  things  which  a  statutory  notice  of  want  of  novelty  in 
an  action  at  law  is  required  to  contain.6 

It  has  been  held  on  the  circuit,  that  evidence  of  want  of 
novelty,  taken  without  being  properly  pleaded  in  the  an- 
swer, is  not  made  admissible  by  being  set  up  in  a  subse- 
quent amendment  of  that  pleading.6  In  another  case  it  was 
held  to  rest  in  the  discretion  of  the  court  to  admit  the  evi- 
dence, so  taken  and  subsequently  pleaded,  or  to  reject  that 
evidence,  but  permit  the  defendant  to  take  if  anew  under 
the  amended  answer.7  These  holdings  are  hardly  consist- 
ent with  each  other,  and  neither  of  them  seems  consistent 


1  Vance  v.  Campbell,  1  Black.  5  Agawam  Co.  v.  Jordan,  7  Wal- 

430,  1861.  lace,  583,  1868;  Bates  «.  Coe,  98  U. 

s  Carnrick  v.  McKesson,  8  Fed.  S.  31,  1878;  Planing-Machine  Co.  0. 

Rep.  807,  1881.  Keith,  101  U.  S.  493,  1879. 

3  Doughty  «.  West,  2  Fisher,  555,  «  Roberts  v.  Buck,  1  Holmes,  234, 
1865.  1873. 

4  Seymour*?.  Osborne,  11  Wallace,  T  Allis  «.  Buckstaff,  13  Fed.  Rep. 
516, 1870;  Roemer  v.  Simon,  95  U.  879,  1882. 

S.  214, 1877. 


CHAP.  XX.]  ACTIONS   IN   EQUITY.  447 

with  an  earlier  Supreme  Court  decision  on  a  similar  point.1 
In  that  case  it  was  held  that  evidence  of  want  of  novelty  is 
admissible  in  an  action  at  law,  where  it  was  taken  without 
being  properly  set  up  in  any  notice,  but  where  a  proper 
notice  was  subsequently  given,  and  given  thirty  days  before 
the  trial. 

Where  the  answer  states  that  the  patent  sued  on  is  void 
for  want  of  novelty,  evidence  to  support  that  statement  will 
be  admitted  on  the  hearing,  though  not  specified  in  the  an- 
swer, unless  the  complainant  objects  to  that  evidence  for 
want  of  the  statutory  notice.2 

§  601.  The  fourth  defence  cannot  rightly  be  made  in  a 
plea,  for  though  a  defendant  may  make  an  oath  that  he  be- 
lieves the  patented  thing  to  be  without  utility,  he  can 
hardly  swear  that  it  is  certainly  so.  Others  might  succeed 
in  using  it  where  he  had  failed.  An  answer  is  therefore 
the  only  proper  pleading  for  this  defence,  and  without 
being  set  up  in  the  answer,  it  cannot  be  made  at  the  hear- 
ing.3 

§  602.  The  fifth  and  sixth  defences  both  require  to  be  in- 
terposed in  an  answer,  because  they  both  rest  on  evidence 
of  abandonment  outside  of  the  bill,  and  therefore  cannot  be 
interposed  by  a  demurrer,4  and  because,  being  two  of  the 
five  defences  provided  for  by  Section  4920  of  the  Revised 
Statutes,  neither  of  them  can  be  set  up  in  a  plea.5 

§  603.  The  seventh  defence  cannot  be  interposed  in  a 
plea  because  it  involves  the  construction  of  the  claims  of 
the  letters  patent  in  suit.  Letters  patent  are  not  void, 
merely  because  they  describe  something  not  shown  in  the 
original  application  therefor.  It  is  only  when  they  claim 
something  not  indicated  or  described  in  the  specification  or 


1  Teese  v.  Huntingdon,  23  How-  lace,  793,  .1869. 

am,  2,  1859.  4  United  States  Electric  Lighting 

2  Roemer  v.  Simon,  95  U.  S.  220,  Co.  t>.  Consolidated  Electric  Light 
1877;  Brown  t>.  Hall,  6  Blatch.  405,  Co.  33  Fed.  Rep.  869,  1888. 

1869 ;  Barker  v.  Stowe,  15  Blatch.  5  Carnrick  v.  McKesson,  8  Fed. 

49,  1878.  Rep.  807,  1881. 

3  Rubber  Co.  ®.  Goodyear,  9  Wai- 


44g  ACTIONS  IN   EQUITY.  [CHAP.  XX. 

drawings  of  the  original  application  that  they  are  obnoxious 
to  the  seventh  defence.  The  question  what  letters  patent 
claim  is  a  question  of  law  for  the  court,  and  is  therefore 
not  one  which  can  be  raised  by  a  plea  in  an  action  in  equity. 
Nor  can  this  defence  be  raised  by  a  demurrer,  because,  in 
order  to  decide  upon  its  validity  the  court  must  not  only 
construe  the  claims  of  the  patent,  but  must  also  compare 
the  claims  so  construed  with  the  original  application,  and 
that  application  must  be  'introduced  for  the  purpose,  as  a 
matter  of  evidence.  This  defence  must  therefore  be  set  up 
in  an  answer,  and  not  otherwise. 

§  604.  The  eighth  defence  cannot  be  set  up  in  a  plea,  but 
must  be  interposed  in  an  answer,  because  it  is  one  of  the 
five  for  which  the  statute  prescribes  that  form  of  pleading 
in  equity  cases.1 

§  605.  Either  the  ninth  or  the  tenth  defence  may  be  in- 
terposed in  a  plea  where  the  defendant  knows  the  fact  of 
joint  or  of  sole  invention  upon  which  they  respectively 
stand.  Each  of  these  defences  rests  upon  a  single  matter 
of  fact,  which  if  decided  against  the  complainant  is  fatal  to 
his  patent.  But  it  is  always  unwise  to  make  either  of  these 
defences  in  a  plea,  because  the  complainant  will  have  no 
alternative  but  to  file  a  replication,  and  because,  by  doing 
so,  he  will  cut  off  all  other  defences,  and  because  there  is 
always  a  possibility  that  the  court  will,  on  the  evidence,  de- 
cide that  the  invention  was  joint,  or  was  several,  according 
as  it  may  be  necessary  to  do  in  order  to  sustain  the  patent.* 
An  answer  is  therefore  the  best  pleading  in  which  to  em- 
body either  of  these  two  defences. 

§  606.  The  eleventh  defence  stands  in  the  same  category, 
in  respect  of  equity  pleading,  with  the  third,  fifth,  sixth, 
and  eighth,  and  must,  like  them,  be  made  in  an  answer,  and 
not  in  a  plea. 

§  607.  The  twelfth  defence  cannot  be  made  in  a  plea,  be- 


1  Revised  Statutes,  Section  4920;  *  Pitts  v.  Hall,  2Blatch.  229, 1851; 
Carnrick  t>.  McKesson,  8  Fed.  Rep.  Blandy  v.  Griffith,  3  Fisher,  616, 
807,  1881.  1869. 


CHAP.  XX.]  ACTIONS  IN   EQUITY.  449 

cause,  though  the  defendant  might  be  able  to  make  oath 
that  he  is  a  person  skilled  in  the  art  to  which  the  invention 
covered  by  the  patent  appertains,  and  that  the  description 
contained  in  that  patent  is  not  full,  clear,  concise,  and  exact 
enough  to  enable  him  to  make  and  use  the  same,  he  could 
not  make  oath  that  the  same  thing  is  true  of  other  persons 
skilled  in  that  art.  Even  if  a  defendant  were  to  make  the 
latter  oath,  the  complainant,  by  replying,  could  confine  the 
issues  of  the  case  to  that  point,  and  could  probably  win 
that  issue  by  means  of  the  evidence  of  other  skilled  per- 
sons. An  answer  is,  therefore,  the  proper  pleading  for  this 
defence  also. 

§  608.  Nor  can  the  thirteenth  defence  be  set  up  in  a  plea, 
because  it  depends  on  the  construction  of  the  claims  of  the 
letters  patent,  and  not  upon  any  matter  of  fact  to  be  sworn 
to  in  a  plea  or  proved  in  a  deposition.  But  this  defence 
can  be  made  by  a  demurrer,  where  profert  has  been  made 
of  the  letters  patent,  or  they  have  otherwise  been  made  a 
part  of  the  bill.  An  answer  is  also  a  proper  pleading  in 
which  to  interpose  this  defence. 

§  609.  The  fourteenth  defence  also  generally  requires  to 
be  set  up  in  an  answer.1  A  plea  is  not  ordinarily  suitable 
for  the  purpose,  because  this  defence  depends  primarily 
upon  the  necessity  for  a  disclaimer,  and  because  that  neces- 
sity depends  upon  the  claim  being  obnoxious  to  one  or  more 
of  the  first  three  defences,  and  because  the  third  defence 
always,  and  the  first  and  second  generally,  require  to  be  in- 
terposed in  an  answer,  if  interposed  at  all.  Even  if  tech- 
nically proper  in  any  case,  a  plea  would  be  at  least  an  in- 
judicious pleading  to  adopt  for  this  defence,  because  it 
would  be  likely  to  be  met  with  proof  of  some  good  excuse 
for  the  delay  to  disclaim. 

§  610.  The  fifteenth  defence  can  never  be  interposed  in  a 
plea,  because  it  primarily  depends  either  upon  the  original 
patent  not  being  inoperative  or  invalid  by  reason  of  a  de- 
fective or  insufficient  specification,  or  upon  its  not  being 

1  Burden  n.    Corning,  2   Fisher,  498,  1864. 


450  ACTIONS  IN   EQUITY.  [CHAP.  XX. 

invalid  in  part,  for  want  of  novelty.1  Where  it  primarily 
depends  upon  the  first  of  these  matters,  it  depends  either 
upon  the  construction  of  the  original  letters  patent,  or  upon 
proof  that  any  person  skilled  in  the  art  to  which  the  inven- 
tion belongs,  could  from  the  original  specification  make  and 
use  the  same ;  and  where  it  depends  upon  fhe  second  of  these 
matters,  it  depends  upon  proof  that  everything  claimed  in 
the  original  letters  patent  was  novel.  None  of  these  matters 
can  ordinarily  be  put  into  a  plea.  Statements  of  the  true 
construction  of  a  patent  cannot  be,  because  they  are  state- 
ments of  law.  Statements  that  any  person  skilled  in  the 
art  can  make  and  use  a  particular  invention,  from  a  par- 
ticular specification,  are  hardly  proper  in  pleas,  because  a 
defendant  ought  seldom  to  attempt  to  swear  what  other 
persons  can  or  cannot  do.  And  statements  that  every- 
thing claimed  in  the  patent  of  another  was  novel  with  him, 
should  never  go  into  a  plo-a,  bocauso  a  drtViid.-int  can  nover 
know  that  none  of  those  things  were  previously  known  or 
used.  Nor  can  this  defence  be  raised  by  a  demurrer,  unless 
the  original  letters  patent  are  incorporated  in  the  bill  for 
infringement  of  its  reissue ;  and  not  even  then  can  it  be  so 
raised  unless  the  question  is  solely  one  of  construction  of 
the  original  letters  patent.  An  answer  is  always  the  most 
suitable  place  in  which  to  interpose  this  defence,  and  gener- 
ally it  is  the  only  possible  pleading  for  the  purpose. 

§  611.  The  sixteenth  defence  depends  partly  on  the  com- 
parative construction  of  the  original  and  reissue  letters 
patent,  and  partly  upon  evidence  that  the  delay  in  applying 
for  the  reissue  was  unreasonable.  Where  both  the  original 
and  the  reissue  are  proffered  or  incorporated  in  the  bill,  this 
defence  may  be  made  by  demurrer,  because  the  court  then 
has  every  necessary  means  of  making  the  comparative  con- 
struction,' and  because  long  delay  will  be  hdd  to  be  un- 
reasonable, unless  it  is  excused  in  the  bill.  Where  the  bill 
omits  to  set  out  the  original  patent,  this  defence  must  be 

1  Revised  Statutes,  Section  4916.          »  Powder  Co.  t>.  Powder  Worku, 

98  U.  8.  126,  1878. 


CHAP.  XX.]  ACTIONS  IN   EQUITY.  451 

made  in  an  answer,  for  such  mixed  questions  of  law  and 
fact  are  wholly  unsuitable  to  a  plea.1 

During  the  time  which  has  passed  since  this  defence  was 
made  known  to  the  bar,'  it  has  several  times  been  success- 
fully raised  on  the  hearing,  without  any  pleading  to  sup- 
port it.  But  lack  of  pleading  appears  to  have  been  sug- 
gested in  but  one  of  the  reported  cases,  and  in  that  case  the 
court  decided  that  there  was  no  such  lack.  To  hold  that 
there  is  no  necessity  for  any  answer  to  support  this  defence, 
would  seem  to  be  contrary  to  the  fundamental  rules  of 
equity  pleading.' 

§  612.  The  seventeenth  defence  depends  upon  the  com- 
parative  construction  of  the  original  and  reissue  letters 
patent.  It  may  be  made  on  demurrer,  where  both  those 
documents  are  proffered  or  otherwise  incorporated  in  the  bill. 
If  the  original  letters  patent  are  not  so  incorporated,  this 
defence  may  be  made  in  an  answer ;  but  it  cannot  be  made 
in  a  plea ;  because  the  question  involved  is  one  of  construe- 
tion  of  documents,  and  not  a  question  of  fact  to  bo  sworn 
to  by  a  defendant,  or  to  be  decided  upon  the  replication  of 
the  complainant  and  the  evidence  of  experts. 

§  613.  The  eighteenth  defence  may  be  made  by  a  de- 
murrer, where  the  bill  shows  who  applied  for  the  exten- 
sion, and  shows  that  he  was  neither  the  inventory  nor  hit. 
administrator  nor  executor.  Where  the  bill  does  not  con- 
tain full  statements  on  both  these  points,  this  defence 
should  be  made  in  an  answer;  for  the  defendant  cannot 
know  of  his  own  knowledge  that  the  proper  person  did  not 
apply  for  the  extension,  and  because  that  fact  could  not  be 
proved  by  producing  a  copy  from  the  records  of  the  Patent 
Office,  of  an  application  made  by  an  improper  person,  even 
if  Patent  Office  records  could  be  pleaded  in  equity  without 
an  oath  to  verify  the  plea. 

§  614.  The  nineteenth  defence  may  be  set  up  in  a  plea,  if 


1  Maxwell  9.  Kennedy,  8  Howard,      850,  1882. 

222,  1850.  •  Rubber  Co.  t>.  Goodyear,  0  Wai- 

'  Miller  9.  BraM  Co.  104  U.  8.      lace,  70S,  1869. 


452 


ACTIONS  IN   EQUITY.  [CHAP.  XX. 


the  defendant  has  personal  knowledge  of  the  record  which 
he  pleads,  and  can  therefore  make  the  required  oath  that 
there  is  in  fact  such  a  record.  If  he  has  no  such  knowledge, 
the  defence  must  be  made  in  an  answer,  for  the  ancient  rule 
that  records  may  be  pleaded  in  equity,  without  an  oath,  is 
inconsistent  with  the  United  States  equity  rule  upon  the 
subject  of  pleas.1 

§  615.  The  twentieth  defence  can  be  made  by  a  demurrer, 
where  the  bill  shows  the  patent  to  have  expired  when  the 
doings  which  constitute  the  alleged  infringement  were  com- 
mitted. But  that  will  seldom  be  the  fact,  for  the  expiration 
relied  upon  in  such  cases  is  nearly  always  due  to  the  ex- 
piration of  some  foreign  patent  for  the  same  invention,  and 
not  to  anything  which  appears  on  the  face  of  the  United 
States  patent  in  suit.  Where  the  defence  depends  upon 
the  expiration  of  a  foreign  patent  which  is  not  mentioned 
in  the  bill,  it  cannot  be  set  up  in  a  demurrer.  Nor  can  it 
always  be  set  up  in  a  plea,  because  it  depends  not  only 
upon  the  existence  of  a  foreign  patent,  but  also  upon  that 
patent  being  for  the  same  invention  as  the  patent  in  suit, 
and  because  this  last  question,  except  where  the  two  pat- 
ents are  plainly  identical,  is  one  of  construction  for  the 
court.2  This  defence  must  therefore  generally  be  inter- 
posed in  an  answer.  . 

§  616.  The  twenty-first  defence  may  be  made  in  a  plea,  if 
the  defendant  knows  that  the  complainant  made  or  sold 
specimens  of  the  patented  thing  during  the  life  of  the 
patent  without  marking  them  "  patented,"  and  if  the  de- 
fendant was  not  duly  notified  of  his  infringement,  or,  if 
notified,  immediately  discontinued  to  infringe.3  This  de- 
fence can  also  be  made  in  an  answer,  and  that  is  the  most 
convenient  pleading  in  which  to  interpose  it,  because  it  is 
seldom  a  full  defence  to  an  action  in  equity.  It  is  never  a 
defence  to  a  prayer  for  an  injunction,  though  it  is  to  a 
prayer  for  damages."  Whether  it  is  a  defence  to  a  prayer 

1  E(lui#  Rule  81.  s  Revised  Statutes,  Section  4900. 

2  De  Florez  «.  Reynolds,  17  Blatch.          «  Goodyear  t.  Allyn,  6  Blatch.  33, 
436,  1880.  1868. 


CHAP.  XX.]  ACTIONS  IN   EQUITY.  453 

for  infringer's  profits,  is  an  unsettled  question,  the  solution 
of  which  will  involve  the  balancing  of  a  number  of  consid- 
erations. In  the  affirmative,  it  can  be  argued  that  profits 
are  but  equitable  substitutes  for  damages,  and  as  equity 
follows  the  law  in  respect  of  other  parts  of  the  patent  sys- 
tem, it  ought  also  to  follow  it  in  this.  But  it  can  be  replied 
in  the  negative,  that  equity  does  not  altogether  follow  the  law 
in  the  matter  of  pecuniary  recoveries  for  infringements  of 
patents,  but  primarily  determines  the  amounts  of  such  re- 
coveries on  quite  different  principles  from  those  used  in 
courts  of  law  for  that  purpose.  And  it  can  also  be  argued 
in  the  negative,  that  though  it  would  be  wrong  to  force  a 
defendant  to  pay  damages,  regardless  of  the  amount  of  his 
profits,  for  infringements  against  which  the  complainant 
neglected  to  warn  him,  it  would  not  be  unjust  to  compel  a 
defendant  to  return  to  the  complainant  whatever  profits  the 
former  realised  from  even  an  unwitting  infringement  of  the 
patent  of  the  latter.  To  this  last  point  it  can  be  rejoined 
for  the  affirmative,  that  such  a  case  is  not  merely  a  case  of 
unwitting  infringement,  but  is  also  an  instance  of  a  patentee 
leading  others  to  infringe  his  patent,  by  unlawfully  conceal- 
ing the  fact  of  its  existence,  and  that,  though  a  failure  to 
mark  "patented"  would  lack  some  of  the  elements  of  a 
technical  estoppel,  still  it  is  such  a  violation  of  the  statute 
as  ought  to  cause  a  forfeiture  of  all  remedies  for  infringe- 
ment committed  before  the  giving  of  actual  notice  of  the 
patent. 

§  617.  The  twenty-second  defence  may  be  made  by  de- 
murrer, where  the  bill  sets  forth  copies  of  the  complainant's 
title  papers,  either  in  the  stating  part,  or  in  exhibits  at- 
tached to  the  bill  and  thus  made  parts  thereof,  or  where 
the  bill  pleads  those  papers  according  to  their  legal  effect, 
and  in  such  a  way  that  the  title  appears  on  the  face  of  the 
bill  to  be  defective.  Where  the  bill  shows  a  good  prima 
facie  title,  but  where  the  defendant  knows  that  one  of  the 
papers  which  compose  its  chain  was  executed  after  the  as- 
signor had  assigned  his  right  to  another,  and  that  the  prior 
assignment  was  recorded  in  the  Patent  Office  within  three 


454  ACTIONS  IN  EQUITY.  [CHAP.  XX. 

months  after  its  date  ;  or  knows  that  such  assignor  assigned 
his  right  to  another  for  a  valuable  consideration,  more  than 
three  months  after  the  making  of  the  assignment  set  up  in 
the  bill,  and  before  the  latter  was  recorded  in  the  Patent 
Office,  and  without  the  junior  assignee  having  notice  of  the 
senior  unrecorded  assignment ;  the  defendant  may  success- 
fully set  up  those  facts  in  a  plea.  The  action  of  a  com- 
plainant will  be  defeated  by  evidence  of  either  of  these  two 
sorts  of  faults  in  his  title.1  Either  of  these  sets  of  facts 
may  also  be  set  up  in  an  answer,  but  it  is  better  to  inter- 
pose them  in  a  plea  when  the  defendant  is  certain  of  their 
existence. 

§  618.  The  twenty-third  defence  may  be  put  into  a  plea, 
and  that  is  the  most  appropriate  pleading  in  which  to  inter- 
pose it,  where  the  defendant  is  sure  of  the  fact  of  a  license. 
But  if  there  is  any  doubt  about  the  existence  of  a  vital 
license,  and  if  the  defendant  has  any  other  defence,  it  is  un- 
wise to  trust  the  case  to  a  plea,  for  if  he  fails  in  proving  its 
truth,  he  will  thereupon  suffer  final  defeat,  no  matter  how 
many  other  defences  he  might  have  invoked. 

§  619.  The  twenty-fourth  defence  should  be  treated  in 
respect  of  pleading  in  the  same  way  as  the  twenty-third, 
and  that  whether  the  release  pleaded,  was  executed  before 
or  after  the  filing  of  the  bill.8 

§  620.  The  twenty-fifth  defence  may  be  interposed  in  a 
plea,  but  there  is  no  good  reason  for  adopting  that  practice, 
and  there  is  an  excellent  one  for  avoiding  it.  When  such  a 
plea  is  put  in,  the  complainant  has  no  alternative  but  to  file 
a  replication,  because  non-infringement  is  undeniably  a 
perfect  defence  to  a  bill  based  on  alleged  infringement  of  a 
patent.  Such  a  replication  will  confine  the  issues  of  the 
case  to  the  single  one  of  infringement,3  and  thus  cut  off  all 
other  defences,  if  that  issue  is  decided  against  the  defend- 

1  Revised  Statutes,  Section  4898.  v.  Dorr,  13  Blatch.  26, 1870;  Story's 

2  Daniell's  Chancery  Practice,  669.  Equity  Pleading,  Section  697;  Dan- 

3  Hughes  v.   Blake,   6  Wheaton,  iell's  Chancery  Practice,  Vol.  1,  Ch. 
472,  1821;  Rhode  Island  v.  Massa-  XV.  Sec.  V. 

chusetts,  14  Peters,  257, 1840;  Myers 


CHAP.  XX.]  ACTIONS  IN   EQUITY.  455 

ant1  It  was  a  disregard  of  these  points  of  equity  pleading, 
that  led,  in  two  cases  on  the  circuit,  to  holding  that  a  plea 
of  non-infringement  is  not  admissible  in  an  equity  suit* 
Where  the  defendant  is  sure  that  he  has  never  infringed  the 
patent  upon  which  he  is  sued,  a  plea  of  non-infringement  is 
the  scientifically  correct  defence  to  make.  But  if  he  has 
any  doubt  on  that  point,  and  has  any  hope  based  on  any 
other  defence,  he  should  not  risk  the  entire  litigation  on 
one  issue  :  should  not  plead  non-infringement,  but  should 
set  up  that  and  all  his  other  defences  in  an  answer. 

§  621.  The  twenty-sixth  defence  may  be  made  in  a  plea, 
and  it  ought  to  be  so  made  in  every  case  where  the  defendant 
is  certain  that  he  can  prove  the  facts  which  he  is  advised 
amount  to  a  basis  for  an  estoppel.  If  those  facts  are  found, 
on  an  argument  of  the  plea,  not  to  constitute  an  estoppel, 
the  defendant  will  be  permitted  to  file  an  answer  setting  up 
other  defences.  It  is  only  when  a  plea  in  equity  is  replied 
to,  and  then  proved  not  to  be  true  in  fact,  that  a  defendant 
loses  any  proper  advantage  by  filing  such  a  plea. 

§  622.  The  twenty-seventh  defence  may  be  interposed 
by  a  demurrer,  where  the  bill  clearly  states  the  time  when 
the  infringement  was  committed,  or  the  space  of  time  dur- 
ing which  it  was  carried  on.  Where  the  bill  simply  states 
that  the  infringement  occurred  during  the  life  of  the  patent, 
and  where  any  part  of  that  life  is  remote  enough  in  point 
of  time  to  be  barred  by  either  the  national  or  the  State 
statute  of  limitation,  if  either  is  applicable  thereto  ;  then 
the  applicable  statute  must  be  set  up  in  a  plea  or  in  an 
answer,  in  order  to  avail  the  defendant  An  answer  is  to 
be  preferred  to  a  plea  for  this  purpose,  in  all  cases  where 
the  statute  bars  only  a  part  of  the  right  upon  which  the  ac- 
tion is  based  ;  because  an  answer  must  generally  be  filed  to 
the  residue  of  the  bill,  and  because  the  proceedings  are 
simplified  by  putting  all  the  defences  into  one  pleading. 

1  Mitford  &  Tyler's  Equity  Plead-  »  Sharp  v.  Reissner.  9  Fed.  Rep. 
ing,  390;  Theberath  r>.  Trimming  445, 18*1 :  Korn  «.  Wiebuscb,  38  Fed. 
Co.  5  Bann.  &  Ard.  585,  1880.  Rep.  51.  1887. 


456  ACTIONS  IN   EQUITY.  [CHAP.  XX. 

Statutes  of  limitation  have  the  same  effect  upon  actions 
in  equity  in  the  Federal  courts,  that  they  have  upon  corre- 
sponding actions  at  law.1 

§  623.  A  replication  is  required  to  be  filed  by  the  com- 
plainant, in  order  to  put  in  issue  those  points  wherein  the 
answer  disagrees  with  the  bill.  No  special  replication  is 
permitted  in  equity  in  the  United  States  courts."  The 
general  replication  is  required  to  be  filed  on  or  before  the 
rule  day,  which  next  succeeds  that  upon  which  the  answer 
is  due  and  is  filed ; 3  but  if  filed  after  that  time,  it  may,  at 
the  discretion  of  the  court,  be  ordered  to  stand  ; 4  or  it  may, 
if  offered  after  that  time,  be  allowed  by  the  court  to  be  filed 
nunc  pro  tune  as  of  the  day  whereon  it  was  due.5 

§  624.  Before  tracing  further  the  common  course  of  an 
action  in  equity  for  infringement  of  a  patent,  it  is  expedient 
to  make  a  short  excursion  into  the  field  of  those  subordi- 
nate bills  which  are  sometimes  required  to  be  filed,  before 
decrees  for  infringements  can  properly  be  entered.  Four 
kinds  of  such  bills  are  known :  1.  Supplemental  bills.  2. 
Bills  in  the  nature  of  supplemental  bills.  3.  Bills  of  re- 
vivor.  4  Bills  in  the  nature  of  bills  of  revivor. 

§  625.  A  supplemental  bill  is  required,  where  the  origi- 
nal bill  was  filed  by  a  person  as  executor  or  administrator, 
or  as  assignee  in  bankruptcy  or  insolvency,  whenever  any 
other  person  succeeds  to  the  title  of  the  complainant  to  act 
in  that  representative  capacity.8  Such  a  bill  is  also  neces- 
sary, in  order  to  subject  the  estate  of  the  defendant  to  a 
decree,  where  he  is  adjudged  bankrupt  or  insolvent  after 
the  bill  against  him  is  filed.7  His  assignee  in  bankruptcy 
or  insolvency  is  the  proper  person  to  be  made  the  defend- 


1  Elmendorf  v.  Taylor,  10  Whea-  B  Peircea.  "West's  Executors,  IPe- 
ton,  168,  1825;   Miller  v.  Mclntyre.  ters'  Circuit    Court    Reports,   351, 
6  Peters,  66,  1832;  Bank  of  United  1816. 

States  v.  Daniel,  12  Peters,  56, 1838.  «  Story's   Equity  Pleading,   Sec- 

2  Equity  Rule  45.  tion  340. 

8  Equity  Rule  66.  '  Mitford  &  Tyler's  Equity  Plead- 

4  Fisher  9.  Hayes,  6  Fed.  Rep.  77,  ing,  166. 
1881 


CHAP.  XX.]  ACTIONS  IN   EQUITY.  457 

ant  to  such  a  bill.1  He  will  come  before  the  court  in  the 
same  plight  as  that  of  the  bankrupt,  and  will  be  bound  by 
all  the  prior  proceedings  in  the  case.1  A  supplemental  bill 
is  also  a  proper  one  to  be  filed  against  a  stranger  to  the 
original  bill,  where  he  has  conspired  with  the  original  de- 
fendant to  infringe  the  patent  in  suit  after  the  original  de- 
fendant was  enjoined  from  doing  so  himself.*  And  such  a 
bill  is  proper,  where  a  patent  is  extended  after  the  filing  of 
the  original  bill,  if  the  defendant  continues  to  infringe  the 
patent  after  the  extension  is  granted.4  The  same  reasons 
which  support  the  latter  rule,  will  also  support  a  sup- 
plemental bill  based  on  a  new  patent  covering  some  fea- 
ture of  those  doings  of  the  defendant  which  also  infringe 
the  patent  originally  sued  upon ;  and  will  also  support 
such  a  bill  where  the  defendant  so  changes  the  charac- 
ter of  his  doings  pendente  lite  as  to  make  them  infringe 
some  other  patent  of  the  complainant,  as  a  part  of  the 
same  acts  that  constitute  infringements  upon  the  patent 
upon  which  the  original  bill  was  based.  But  a  good  title, 
acquired  after  the  filing  of  an  original  bill,  cannot  be 
brought  into  a  case  by  a  supplemental  bill,  to  take  the 
place  of  the  bad  title  stated  in  the  original  bill.* 

§  626.  A  bill  in  the  nature  of  a  supplemental  bill  is  called 
for,  where  the  original  bill  was  filed  by  a  person  in  his  own 
right,  whenever  that  right  passes  to  another  person  by 
voluntary  assignment,  or  passes  from  the  complainant  to 
his  assignee  in  bankruptcy  or  insolvency.8  This  rule  ap- 
plies not  only  to  cases  where  the  entire  right  of  a  sole  com- 
plainant is  thus  transferred  pendente  lite,  but  also  to  cases 
where  the  the  right  of  one  of  several  complainants  is  so 
transferred,  and  to  cases  where  a  part  only  of  the  right  of 

1  Sedgwick  t>.  Cleveland,  7  Paige  «  Reedy  t>.  Scott,  23  Wallace,  852, 

(N.  Y.),  290,  1838.  1874. 

»  Mitford  &  Tyler's  Equity  Plead-  *  Emerson  ».  Hubbard,  34  Fed. 

ing.  166.  Rep-  827,  1888. 

3  Parkhurst  v.  Kinsman,  2  Blatch.  *  Story's  Equity  Pleading,  Sec- 

72,  1848.  tion  349. 


458  ACTIONS  IN   EQUITY.  [CHAP.  XX. 

a  sole  complainant  is  made  the  subject  of  a  voluntary  as- 
signment after  the  filing  of  the  original  bill.1 

§  627.  A  bill  of  revivor  is  the  proper  means  of  reviving 
and  continuing  an  action  in  equity  for  infringement  of 
a  patent,  which  has  abated  by  reason  of  the  death  of  one  or 
more  of  the  parties  thereto.*  It  is  to  be  brought  by  or 
against  the  executor  or  administrator  of  the  deceased  party, 
and  not  by  or  against  his  heirs.3  When  such  a  bill  is  filed, 
if  the  facts  warrant  him  in  so  doing,  the  defendant  may  file 
a  plea  denying  that  the  person  who  filed  the  bill  was  en- 
titled to  do  so,4  or  interposing  some  statute  of  limitation 
applicable  to  bills  of  revivor.6  There  is  no  Federal  statute 
of  that  kind,  but  it  is  not  improbable  that  the  relevant 
statutes  of  the  several  States  are  applicable  to  bills  of  re- 
vivor in  Federal  courts.8  Those  State  statutes  are  of  many 
species.  In  some,  the  limitation  begins  to  run  from  the 
death  of  the  deceased  complainant ;  and  in  others,  from  the 
time  his  death  is  suggested  in  the  case  ;  and  in  others,  from 
the  time  when  a  scire  facias  to  revive  is  served  on  the  per- 
son entitled  to  revive.  The  length  of  the  limitation  also 
varies  in  the  different  States.  Perhaps  the  shortest  time 
is  six  months,  and  the  longest  eighteen. 

Where  a  bill  of  revivor  is  filed  by  the  proper  person  within 
the  proper  time,  the  action  will  stand  revived  without  any 
pleading  being  filed  by  the  defendant.7  But  where  a  de- 
fendant dies  without  filing  a  sufficient  answer  to  the  origi- 
nal bill  and  the  amendments  thereto,  the  bill  of  revivor 
which  is  occasioned  by  his  death,  ought  to  pray  that  the 
person  against  whom  it  seeks  to  revive  the  suit,  be  com- 
pelled to  answer  the  original  bill  and  its  amendments,  or  so 
much  thereof  as  remains  unanswered.8  After  an  action  in 

1  Story's   Equity  Pleading,   Sec-  5  Story's  '  Equity  Pleading,   Sec- 
tion 346.  tion  831. 

2  Kirk  v.  Du  Bois,  28  Fed.   Rep.  «  Revised  Statutes,  Section  721. 
460.  1886.  *  Equity  Rule  56. 

8  Story's  Equity  Pleading,  Sec-  8  Story's  Equity  Pleading,  Sec. 
tion354a.  375;  Mitford  &  Tyler's  Equity 

4  Story's  Equity  Pleading,    Sec-      Pleading,  174. 
tions  829  and  830. 


CHAP.  XX.]  ACTIONS  IN  EQUITY.  459 

equity  has  been  duly  revived,  it  proceeds  in  the  new  form, 
unaffected  by  the  change  of  name ;  and  all  the  testimony 
theretofore  taken  may  be  thereafter  used,  precisely  as  if  no 
abatement  and  revivor  had  occurred.' 

§  628.  A  bill  in  the  nature  of  a  bill  of  revivor  is  required 
where  the  complainant  in  the  original  bill  assigned  the 
right  of  action  and  the  patent  upon  which  it  was  based,  and 
then  died  before  the  assignee  took  his  place  in  the  action, 
by  means  of  a  bill  in  the  nature  of  a  supplemental  bill.  A 
bill  of  the  latter  sort  will  not  answer  the  purpose,  unless  it 
is  filed  before  the  death  of  the  original  complainant ;  be- 
cause that  death  will  cause  an  abatement  of  the  suit,  and 
because  only  bills  of  revivor,  or  bills  in  the  nature  of  bills 
of  revivor,  can  revive  an  abated  action  in  equity.1  Bills  of 
revivor  can  be  filed  only  by  privies  in  law,  such  as  execu- 
tors and  administrators  ;  and  not  by  privies  in  estate,  such 
as  devisees  and  assignees.1  For  the  latter  class  of  persons 
bills  in  the  nature  of  bills  of  revivor  are  available,  and  by 
means  of  such  a  bill,  an  assignee  who  did  not  file  a  bill  in  the 
nature  of  a  supplemental  bill  before  the  death  of  the  origi- 
nal complainant,  may  draw  to  himself  the  benefit  of  the 
original  action,  in  whatever  stage  it  may  have  been  at  the 
date  of  the  abatement.4  Such  a  bill  is  also  the  proper 
means  of  reviving  an  action  which  has  abated  at  the  death 
of  the  administrator  or  executor  who  was  prosecuting  it  in 
his  representative  capacity,  if  the  person  entitled  to  revive 
represents  the  original  testator  or  intestate,  and  not  the  de- 
ceased executor  or  administrator.* 

§  629.  A  bill  of  revivor  and  supplement  is  merely  a  com- 
pound of  a  supplemental  bill,  and  of  a  bill  of  revivor.'  It 
is  therefore  proper  to  be  filed  when  either  of  the  faois  which 
justify  a  supplemental  bill  and  either  of  the  facts  which 

1  Vattier  v.  Hinde,  7  Peters,  265,  1825. 

1833.  ».  Story's  Equity  Pleading,    Sec. 

9  Equity  Rule  58.  882. 

8  Story's  Equity    Pleading,   Sec.  «  Mitford  &  Tyler's  Equity  Plead- 

879.  ing,  177. 

4  Slack  v.  Walcott,  8  Mason,  511, 


460  ACTIONS  IN   EQUITY.  [CHAP.  XX. 

require  a  bill  of  revivor,  occur  in  one  action.  So  also,  any 
two  or  more  of  the  four  sorts  of  bills  mentioned  in  the  four 
last  sections,  may  be  united  in  one  bill,  whenever  either  of 
the  facts  which  require  either  of  those  bills,  occurs  in  the 
same  action  with  any  of  the  facts  which  require  any  of  the 
others. 

§  630.  Leave  of  court  is  a  prerequisite  to  the  filing  of 
supplemental  bills,  and  bills  in  the  nature  of  supplemental 
bills ;  and  it  is  to  be  obtained  upon  proper  cause  shown, 
and  due  notice  to  the  opposite  party.1  But  neither  bills 
of  revivor  nor  bills  in  the  nature  of  bills  of  revivor  require 
any  such  order,  for  they  may  be  filed  in  the  clerk's  office 
at  any  time.8  The  reason  of  this  difference  is  that  neither 
of  the  last  two  kinds  of  bills  are  useful  except  in  cases  of 
death.  There  can  be  no  temptation  to  file  such  a  bill  as 
either,  unless  a  death  has  occurred  among  the  parties  to 
the  action  ;  and  where  such  a  death  has  occurred,  there  can 
be  no  objection  to  the  filing  of  one  or  the  other.  But  the 
first  two  sorts  of  bills  are  based  upon  events  about  the  true 
character  of  which  counsel  may  be  mistaken  in  any  given 
case,  and  it  is  therefore  necessary,  in  order  to  avoid  an  im- 
proper accumulation  of  pleadings,  that  the  court  should 
pass  upon  the  propriety  of  such  bills  before  they  are  filed. 

§  631.  No  demurrer  plea  or  answer  is  ordinarily  required 
to  be  filed  to  a  bill  of  revivor,  or  to  a  bill  in  the  nature  of  a 
bill  of  revivor.3  But  defendants  are  always  required  to 
demur,  plead,  or  answer  to  supplemental  bills,  and  to  bills 
in  the  nature  of  supplemental  bills.4  Where  a  bill  of  either 
of  those  kinds  shows  on  its  face  that  the  person  who  filed 
it  was  not  a  proper  person  to  do  so,  the  objection  may  be 
made  Toy  a  demurrer,5  and  when  that  fault  exists,  but  does 
not  appear  on  the  face  of  the  bill,  the  defence  grounded 
upon  it  may  be  made  by  a  plea.8  Other  defences  can  be 


1  Equity  Rule  57.  6  Story's  Equity  Pleading,  Section 

2  Equity  Rule  56.  612. 

3  Equity  Rule  56.  6  Story's  Equity   Pleading,    Sec- 

4  Equity  Rule  57.  tion  827. 


CHAP.  XX.]  ACTIONS  IX   EQUITY.  461 

made  to  supplemental  bills,  or  to  bills  in  the  nature  of 
supplemental  bills,  in  the  same  forms  and  in  the  same  cir- 
cumstances in  which  corresponding  defences  can  be  made 
to  original  bills  for  infringement.1 

§  632.  The  hearing  of  an  action  in  equity  for  infringe- 
ment of  a  patent,  may  take  place  before  one  of  the  judges 
of  the  court  sitting  alone,  or  before  several  judges  sitting 
together,  or  before  a  judge  and  a  jury,1  or  before  a  master 
in  chancery.3  Judges  constitute  the  best  tribunals  for  the 
purpose ;  but  as  either  of  the  other  methods  of  trial  may  be 
resorted  to  at  the  will  of  the  court,  it  is  expedient  to  out- 
line the  law  relevant  to  all  three. 

§  633.  An  interlocutory  hearing  by  a  judge,  in  a  patent 
action  in  equity,  is  one  which  occurs  after  the  evidence  rel- 
evant to  the  validity  of  the  patent  and  its  infringement  by 
the  defendant  has  been  taken,  and  before  the  case  is  re- 
ferred to  a  master  to  take  and  state  an  account  of  profits 
and  damages.  The  final  hearing,  which  occurs  after  the 
master  has  taken  that  account  and  filed  his  report,  gener- 
ally involves  nothing  but  the  correctness  of  that  report,  and 
it  therefore  may  appropriately  be  treated  in  the  chapter  on 
profits.  So  also,  the  preliminary  hearing,  which  occurs 
when  a  preliminary  injunction  is  applied  for,  may  properly 
be  discussed  in  the  chapter  on  injunctions.  The  inter- 
locutory hearing  is  generally  the  pivotal  point  of  a  litiga- 
tion. Where  it  results  in  the  success  of  the  defendant  and 
consequent  dismissal  of  the  bill,  it  becomes  a  final  hearing. 

§  634.  Questions  of  law,  in  equity  patent  cases,  are  to  be 
decided  according  to  the  relevant  rules  of  law  and  equity  in 
force  in  the  United  States  courts.  The  sources  of  those 
rules  are  the  statutes  of  the  United  States,  and  the  de- 
cisions of  the  United  States  Supreme  and  Circuit  Courts,  and 
those  decisions  of  the  chancellors  of  England  which  were 
made  before  the  adoption  of  the  Constitution  of  the  United 


1  Story's  Equity   Pleading,   Sec-      77,  Section  2,  p.  816. 
tions  611  and  826.  •  Parker  t>.  Hatfield.  4  McLean,  61, 

1  18  Statutes  at  Large,  Part  3,  Ch.      1845. 


462  ACTIONS  IN   EQUITY.  [CHAP.  XX. 

States.  Later  decisions  of  English  courts  sometimes  indi- 
cate what  the  law  is,  but  no  such  decision  is  of  any  bind- 
ing authority  in  any  United  States  court.  Where  such  a 
decision  is  strictly  relevant  to  a  question  at  bar,  and  is 
supported  by  good  reasoning,  it  may  be  followed  by  a 
United  States  judge  ;  but  if,  as  is  frequently  the  case,  it  re- 
fers to  a  substantially  different  state  of  statute  law  from 
that  to  which  United  States  patent  cases  are  subject,  or  if 
it  was  fallaciously  reasoned  out  by  the  judge  who  delivered 
it,  such  a  decision  may  properly  be  disregarded  in  the  Fed- 
eral courts.  The  decisions  of  State  courts  fall  in  the  same 
category  in  this  respect  with  the  modern  English  decisions, 
except  in  cases  where  the  United  States  statutes  direct  the 
Federal  courts  to  follow  the  laws  of  the  several  States.  In 
those  cases,  the  State  laws  are  binding  on  the  Federal 
judges,  not  because  the  States  have  any  authority  to  pre- 
scribe rules  to  Federal  courts,  but  because  the  national 
legislature  has  adopted  those  particular  State  laws,  instead 
of  framing  and  enacting  corresponding  regulations  of  its 
own. 

Where  questions  arise  to  which  no  direct  answer  can  be 
found  in  the  recognized  sources  of  the  law,  it  becomes  the 
duty  of  the  judge  to  deduce  a  proper  answer,  by  means  of 
just  reasoning,  from  the  general  principles  of  law,  of  equity, 
and  of  justice.  He  will  generally  find  assistance  in  that 
work,  by  consulting  the  obiter  dicta  of  courts  and  the  com- 
mentaries of  text- writers  ;  but  no  obiter  dictum,  and  no  text- 
book, is  of  any  binding  authority.  The  points  of  law  actu- 
ally decided  by  the  United  States  Supreme  Court  are 
generally  binding  on  all  other  United  States  courts,  regard- 
less of  the  reasons  which  support  them.1  There  is  an  ex- 
ception to  this  rule,  where  the  Supreme  Court  has  decided 
the  same  question  both  ways.  In  such  a  case  the  last 
decision  governs,  if  it  expressly  overruled  the  first."  If 

1  American  Middlings  Purifier  Co.  1877. 

v.  Christian,  3  Bann.  &  Ard.  44,  J  Tilghman  V.  Proctor,  125  U.  8. 

1877 ;   Goodyear  Dental  Vulcanite  149,  1887. 
Co.  v.  Davis,  3  Bann.  &  Ard.  116, 


CHAP.  XX.]  ACTIONS  IN   EQUITY.  463 

it  simply  ignored  the  first,  it  may  have  resulted  from  the 
first  decision  not  being  called  to  the  attention  of  the  justices 
who  rendered  the  second.  In  such  a  case  it  is  probably 
the  duty  of  a  circuit  court  to  follow  the  most  reasonable  of 
the  two  decisions,  regardless  of  seniority.  And  there  may 
also  arise  an  exception  to  the  general  rule,  if  the  Supreme 
Court  should  assume  to  legislate  under  the  guise  and  form 
of  judicial  decision.  In  a  plain  case  of  that  kind,  the  lower 
courts  would  be  bound  to  ignore  the  alleged  precedent  in 
making  up  their  judgments,  because  they  are  bound  to  con- 
cert their  judgments  agreeably  to  the  Constitution  and  laws 
of  the  United  States,1  and  because  judicial  legislation  is 
contrary  to  that  Constitution,  and  therefore  external  to 
those  laws."  The  points  of  law  actually  decided  by  a  cir- 
cuit justice  or  circuit  judge,  in  either  of  the  nine  circuits  of 
the  United  States,  unless  they  are  reversed  by  the  Supreme 
Court,  are  binding  upon  all  the  other  judges  who  may  hold 
a  circuit  court  in  that  circuit.'  Such  decisions  are  said  to 
be  the  law  of  the  circuit.  And  the  points  of  law  actually 
decided  by  any  judge  holding  any  United  States  circuit 
court,  are  followed  by  every  other  judge  holding  such  a 
court,  unless  they  have  been  reversed  by  the  Supreme 
Court,  or  are  contrary  to  other  decisions  of  equal  claim  to 
respect,  or  clearly  appear  to  be  erroneous.4 

Adjudicated  cases  are  binding  precedents  in  the  law,  only 
where  the  questions  of  law  involved  in  those  cases  were  actu- 
ally submitted  for  decision  therein ;  and  such  a  submission 
is  not  involved  in  raising  those  questions  in  the  pleadings, 
nor  in  controverting  them  in  the  evidence,  if  one  party  or 
the  other  abandons  those  questions  at  the  hearing.* 

§  635.  Questions  of  fact  depend  upon  the  evidence  in  the 
particular  cases  in  which  they  arise,  except  so  far  as  they 

1  Revised  Statutes,  Section  712.  Rubber  Comb  Co.  85  Fed.  Rep  800, 

8  Constitution,  Article  I.  Sec.  1.  1888;  Kidd  v  Ransom,  85  Fed.  Rep. 

8  Hawes  e.  Cook,  5  Off.  Gaz.  493,  588, 1888;  Eastern  Paper  Bag  Co.  «. 

1874.  Nixon,  35  Fed.  Hep.  752,  1888. 

4  Cary  v.  Mfg.  Co.  31  Fed.  Rep.  *  Celluloid  Mfg.  Co.  «.  Tower,  26 

345,  1887;  Rubber  Trimming  Co.  «.  Fed.  Rep.  45'2,  1885. 


4C4  ACTIONS  IN"   EQUITY.  [CHAP.  XX. 

depetfd  upon  matters  of  which  courts  take  judicial  notice. 
Questions  of  fact  in  patent  cases  often  require  for  their  solu- 
tion a  severely  logical  process  of  reasoning  from  the  tes- 
timony in  the  record.  It  sometimes  occurs  that  the  evi- 
dence in  a  number  of  cases,  pending  in  a  number  of  courts, 
is  substantially  the  same.  Where  one  such  case  has  been 
carefully  argued  and  deliberately  decided,  all  the  other 
courts  follow  that  decision,  as  a  matter  of  comity,  unless  it 
has  been  reversed  by  the  Supreme  Court.1  Where  ques- 
tions of  fact  in  patent  cases  have  been  decided  by  the  Su- 
preme Court,  that  decision  is  conclusive  in  all  other  patent 
cases,  so  far  as  the  evidence  is  substantially  identical  with 
that  before  the  Supreme  Court.* 

§  636.  The  evidence  which  a  complainant  is  required  to 
produce  to  support  his  bill,  in  an  action  in  equity,  is  the 
same  as  that  which  a  plaintiff  in  an  action  at  law  is  required 
to  introduce  in  support  of  his  declaration,  except  that  in 
an  action  in  equity  the  complainant  must  introduce  evidence 
to  excuse  his  delay  in  filing  his  bill,  where  a  long  delay  to 
file  it  occurred  after  the  infringement  took  place ;  and  except 
that  till  after  the  interlocutory  hearing  he  need  introduce 
no  evidence  relevant  to  profits  or  to  damages.  To  ascertain 
the  amount  of  the  defendant's  profits  and  the  amount  of 
the  complainant's  damages  in  a  case  of  infringement,  are 
the  purposes  of  a  reference  to  a  master  in  chancery.  If,  in 
order  to  entitle  a  complainant  to  a  decree  directing  such  a 
reference,  he  were  obliged  to  introduce  proof  that  some 
damages  were  incurred  by  him,  and  that  some  profits  were 


1  Goodyear  Dental  Vulcanite  Co.  1887;  Cary  «.  Mfg.  Co.  81  Fed  Rep. 

*.  Willis,  1  Bann.  &  Ard.  570. 1874;  344, 1887;  Hancock  Inspirator  Co.  t>. 

Putnam  v.  Yerrington,  2  Bann.  &  Regester,   35  Fed.   Rep.  61,  1888 ; 

Ard.  241,  1876;  Rumford  Chemical  Hammerschlag  Mfg.  Co.  t>.  Spald- 

Works  v.  Hecker,  2  Bann.  &  Ard.  ing,  85  Fed.  Rep.  67,  1888. 
360,  1876;  Searls  *.  Worden,  11  Fed.          *  American  Middlings  Purifier  Co. 

Rep.  502,  1882;  American  Ballast  ».  Christian,  3  Bann.   &  Ard.  44, 

Log  Co.  t>.  Cotter,  11  Fed.  Rep.  728,  1877;  American  Bell  Telephone  Co. 

1882  ;  Matthews  v.  Mfg.  Co.  19  Fed.  t».  Southern  Telephone  Co.  34  Fed. 

Rep.  321, 1884;  Worewick  Mfg.  Co.  Rep.  796,  1888. 
«.  Philadelphia,  30  Fed.  Rep.  625, 


CHAP.  XX.]  ACTIONS   IN   EQUITY.  465 

made  by  the  defendant,  a  complicated  account  might  have 
to  be  taken  merely  to  ascertain  whether  a  reference  ought 
to  be  had  to  a  master  to  take  it  over  again.  It  is  therefore 
the  universal  practice,  to  postpone  all  evidence  relevant  to 
profits  and  damages,  till  an  interlocutory  hearing  on  the 
questions  of  validity  and  infringement  has  been  had,  and 
till  those  questions  have  been  decided.  There  is  a  pre- 
sumption, that  profits  resulted  from  the  proved  infringe- 
ment, which  is  strong  enough  to  entitle  a  complainant,  who 
has  prayed  for  that  relief,  to  a  decree  for  an  account  of 
profits.1 

§  637.  The  evidence  which  is  required  to  support  either 
of  the  twenty-seven  defences  which  are  common  to  actions 
at  law  and  actions  in  equity,  is  the  same  in  both  those 
forms  of  proceeding.  Of  the  two  defences  which  are  pecu- 
liar to  equity,  that  of  non-jurisdiction  is  one  which  seldom 
or  never  requires  any  evidence  to  support  it ;  and  laches  is, 
prima/acie,  supported  by  the  fact  of  the  long  lapse  of  time 
which  is  deducible  from  the  complainant's  proofs,  where 
such  a  defence  has  any  foundation  at  all.  Where  the  com- 
plainant introduces  evidence  to  excuse  the  delay,  it  may  be 
necessary  for  the  defendant  to  negative  that  evidence  by 
other  proof,  or  to  prove  facts  which  show  the  complainant's 
excuse  to  be  invalid  or  insufficient. 

§  638.  Testimony  in  actions  in  equity  for  infringements 
of  patents  is  taken  wholly  by  depositions  in  writing,  except 
in  a  few  districts,  where,  in  pursuance  of  local  rules  of 
court,  it  may,  by  the  consent  of  both  parties,  be  taken 
orally  in  open  court. 

§  639.  Depositions  may  be  taken  by  commission,  upon 
interrogatories  filed  by  the  party  taking  it  out,  and  upon 
cross-interrogatories  filed  by  the  adverse  party.1  If  either 
party  so  requires,  all  the  depositions  in  a  case  must  be 
taken  orally,  in  writing,  before  an  examiner,  in  the  presence 
of  the  parties  or  their  agents,  by  their  counsel  or  solicitors, 


1  Andrews  c.  Creegan,  7  Fed.  Rep.         *  Equity  Rule  67. 
477,  1881. 


466  ACTIONS  IN   EQUITY.  [CHAP.  XX. 

and  in  the  method  of  examination  and  cross-examination 
used  in  common-law  courts.1  Where  the  depositions  are  to 
be  taken  in  the  latter  mode,  the  court  may,  on  motion  of 
either  party,  assign  a  time  within  which  the  complainant 
shall  take  his  evidence  in  support  of  the  bill ;  and  a  time 
thereafter,  within  which  the  defendant  shall  take  his  evi- 
dence in  defence ;  and  a  time  thereafter,  within  which  the 
complainant  shall  take  his  evidence  in  reply.2  Depositions 
may  also  be  taken  in  equity  cases,  in  the  method  heretofore 
explained  for  taking  depositions  in  actions  at  law,  whenever 
the  same  facts  exist  to  justify  that  mode  ->f  practice.3  As 
facts  to  justify  depositions  taken  under  that  system  are  of 
frequent  occurrence  in  patent  cases,  and  as  that  system  is 
simpler  than  any  other  prescribed  by  law,  its  use  is  pften 
resorted  to  in  patent  litigation. 

It  is  to  be  observed,  relevant  to  all  methods  of  taking 
depositions,  that  each  item  of  the  procedure  which  is  pre- 
scribed by  rule  or  by  statute,  must  be  strictly  followed  in 
every  case,  unless  it  is  waived  by  a  written  stipulation  of 
the  parties.  It  is  sometimes  the  practice  of  counsel  at  the 
beginning  of  a  litigation  to  enter  into  a  formal  stipulation, 
filed  in  the  case  and  providing  that  after  a  reasonable, 
notice  in  writing,  the  deposition  of  any  witness  may  be 
taken  on  behalf  of  either  party,  orally,  in  writing,  by  ques- 
tion and  answer,  by  and  before  any  notary  public  author- 
ized to  administer  an  oath  at  the  place  of  taking,  without 
his  being  furnished  with  any  copy  of  any  bill  or  answer, 
and  otherwise  in  accordance  with  the  sixty-seventh  Equity 
Rule ;  and  may,  when  completed,  be  delivered  to  the  counsel 
•of  the  party  in  whose  behalf  the  deposition  is  taken,  and 
may  be  produced  and  used  on  the  hearing  with  the  same 
effect  as  if  taken  and  transmitted  into  court  in  all  respects 
as  prescribed  by  that  rule.  Such  a  stipulation  provides  a 
more  convenient  method  of  taking  depositions  than  any 
provided  by  rule  of  court  or  law  of  Congress ;  and  where 

1  Equity  Rule  67  184,  1888  ;  Equity  Rule  68 ;  Section 

9  Equity  Rule  67.  535  of  this  book. 

3  Stegner  v.  Blake,  36  Fed.  Rep. 


CHAP.  XX.]  ACTIONS  IN   EQUITY.  46? 

counsel  are  honest,  such  a  method  is  sufficiently  safe.  The 
authority  of  a  notary  public  to  administer  a  binding  oath  in 
such  a  case,  is  founded  on  a  statute  of  the  United  States.1 
Stipulations  may  also  provide  for  an  enlargement  of  time 
for  taking  depositions ; 2  which  time,  unless  enlarged  by  a 
stipulation  or  by  an  order  of  court,  covers  three  months 
and  no  more.3  These  must  probably  be  held  to  be  lunar, 
and  not  calendar  months  ;  for  the  common-law  definition  of 
the  word  month  has  never  been  changed  by  United  States 
authority.4  But  depositions  taken  out  of  proper  time  will 
be  considered  on  the  hearing,  unless  there  is  a  prior  success- 
ful motion  to  suppress  them.5 

§  640.  Depositions  taken  in  any  other  case,  may  be  used 
in  any  action  in  equity,  if  each  party  therein  was  a  party  to 
the  action  in  which  they  were  taken,  or  is  in  privity  .with  a 
party  to  that  action,  and  if  the  court  grants  a  motion  to  use 
them.8  But  where  either  party  in  the  new  action  was  not  a 
party  to  the  former  one,  and  is  not  in  privity  with  any  party 
thereto,  no  deposition  taken  in  the  former  suit  can  be  used 
in  the  new  one ;  for  no  deposition  can  be  read  against  a 
party,  who  could  not  read  it  in  his  favor  if  it  were  favorable 
to  him.7 

§  641.  Documentary  evidence  is  generally  introduced  be- 
fore the  examiner,  within  the  same  time  that  the  oral  testi- 
mony is  required  to  be  taken,  and  that  is  the  necessary 
course  where  documents  require  to  be  proved  by  oral  testi- 
mony. But  documents  which  prove  themselves,  may  be 
introduced  on  the  hearing  without  having  been  put  in  evi- 
dence before  the  examiner,  unless  such  a  practice,  in  a  par- 
ticular case,  would  operate  as  a  surprise  upon  the  opposite 
party.' 

1  19  Statutes  at  Large,  Ch.  304,  p.  692,  1888. 

206.  '  Dale  v.  Rosevelt,  1  Paige (N.  Y.), 

9  Equity  Rule  67.  35,  1828  ;  Paynes  t.  Coles,  1  Mun- 

•  Equity  Rule  69.  ford  (Va.),   394,    1810;    Barker   «. 
4  Sec.  125  of  this  book.  Shoots,  18  Fed.  Rep.  652,  1884 

6  Matthews  v.  Spangenberg,  19  8  Koapp  t>.  Shaw,  15  Fed.  Rep. 
Fed.  Rep.  824,  1882.  115,  1883. 

•  Clow  v.  Barker,  36  Fed.   Rep. 


468  ACTIONS  IN   EQUITY.  [CHAP.  XX. 

§  642.  A  jury  of  not  less  than  five  and  not  more  than 
twelve  persons  may  be  empannelled  by  any  United  States 
Circuit  Court,  when  sitting  in  equity  for  the  trial  of  a  pat- 
ent cause,  for  the  purpose  of  submitting  to  them  such  ques- 
tions of  fact  in  the  case  as  the  court  shall  deem  it  expedient 
to  submit ;  and  the  verdict  of  such  a  jury  is  treated  in  the 
same  manner  and  with  the  same  effect  as  in  the  case  of 
issues  sent  from  chancery  to  a  court  of  law  and  returned 
with  such  findings.1  Therefore  such  a  verdict  is  only  ad- 
visory, and  never  conclusive  upon  the  court.  If  the  judge 
disagrees  in  opinion  with  the  jury  relevant  to  the  questions 
of  fact  covered  by  the  verdict,  he  may  enter  a  decree  con- 
trary thereto/  But  the  regular  course  of  proceeding  in 
such  a  case  is  to  enter  a  decree  in  accordance  with  the  ver- 
dict, unless  the  party  against  whom  it  was  found  moves  the 
court  for  a  new  trial.  A  new  trial  in  such  a  case  is  granted 
or  refused  according  as  the  judge  thinks  the  verdict  was 
right  or  was  wrong ;  and  without  special  regard  to  any  errors, 
or  freedom  from  errors,  which  characterized  the  admission 
or  rejection  of  evidence  on  the  trial,  or  the  instructions 
which  were  given  or  those  which  were  refused  by  the  judge. 
Where  a  new  trial  is  refused,  and  a  decree  is  entered  in  ac-  • 
cordance  with  the  verdict,  if  the  defeated  party  would  take 
the  case  to  the  Supreme  Court  for  review,  he  must  do  so 
on  appeal  from  the  decree,  and  not  upon  a  writ  of  error  as 
from  a  judgment  entered  upon  a  verdict  in  an  action  at  law. 
In  a  properly  prepared  case,  the  Supreme  Court  will  decide 
whether,  on  the  whole,  the  decree  was  right  or  was  wrong, 
but  it  will  not  pass  upon  the  correctness  or  incorrectness  of 
the  rulings  of  the  judge ,  at  the  jury  trial.  Therefore  the 
evidence  taken  at  the  jury  trial  should  be  preserved,  if 
there  is  any  intention  to  take  the  case  to  the  Supreme 
Court,  but  no  bill  of  exceptions  in  the  case  is  necessary  or 
is  proper.8 

1  18  Statutes  at  Large,  Part  3,  Ch.  and  20  Howard,  290,  1857. 

77,  Section  2,  p.  316  ;  Gray  «.  Halk-  3  Watt  e.  Starke,  101  U.  S.  247 

yard,  28  Fed.  Rep.  854,  1886.  1879. 

'Silsby  v.  Foote,  1  Blatch.  545, 


CHAP.  XX.]  ACTIONS  IN   EQUITY.  469 

§  643.  A  master  in  chancery  may  be  deputed  by  a  circuit 
court  to  try  any  question  of  fact  in  a  patent  case,  and  to 
report  his  conclusion  thereon.'  But  such  a  report  is  ad- 
visory only,  and  no  decree  will  be  entered  upon  it,  if  either 
party  can  convince  the  judge  that  it  was  wrong.  Excep- 
tions to  the  master's  report  are  the  proper  means  of  appeal 
from  his  conclusion.  If,  on  such  exceptions,  the  judge 
concludes  that  the  master  was  wrong  in  any  respect,  he 
may  send  the  case  back  to  him,  with  directions  to  make  a 
new  report,  and  with  prescriptions  of  new  criteria  by  which 
to  make  it ;  *  or  he  may  proceed  to  try  the  questions  of  fact 
himself,  if  that  course  appears  to  be  more  convenient.  The 
rules  of  practice  which  regulate  the  taking  of  evidence  by 
masters  in  chancery,  and  regulate  the  hearings  before  them, 
and  the  filing  of  exceptions  to  their  reports,  are  the  same, 
when  they  are  directed  to  ascertain  the  truth  relevant  to 
such  questions  of  fact  as  novelty  or  infringement,  that  they 
are  in  the  more  common  cases  wherein  they  are  directed  to 
take  and  state  an  account  of  profits  and  damages. 

§  644.  An  interlocutory  decree,  in  an  equity  patent  case, 
is  a  decree  which  adjudges  that  the  patent  sued  upon  is 
valid ;  and  that  the  defendant  has  infringed  it ;  and  that  a 
master  in  chancery  be  directed  to  take  and  report  an  ac- 
count of  the  profits  which  the  defendant  realized  from  that 
infringement,  and  of  the  damages  which  the  complainant 
sustained  by  reason  thereof ;  and  sometimes  that  the  de- 
fendant be  permanently  enjoined  from  further  infringement. 
Judicial  destruction  of  infringing  articles,  is  a  feature  of 
the  patent  laws  of  England,  but  is  not  justified  by  any  ex- 
isting law  of  the  United  States ;  though  that  severe  measure 
has  been  approved  in  one  obiter  dictum*  and  unsuccessfully 
invoked  in  one  adjudicated  case.4  No  appeal  from  an  inter- 
locutory decree  lies  to  the  Supreme  Court.*  Until  after  a 

1  Parker  v.  Hatfield,  4  McLean,  *  American  Bell  Telephone  Co.  v. 

61,  1845.  Kitsell,  35  Fed.  Rep.  521,  1888. 

*  Cawood  Patent,  94  U.  S.   708,  6  Barnard  n.  Gibson,  7  Howard, 

1876.  650,  1849  ;  Humiston  «.  Stainthorp, 

8  Birdsell  f>.  Sbaliol,  112  U.  S.  487,  2  Wallace,  106,  1804. 
1884. 


470  ACTIONS   IN   EQUITY.  [CHAP.  XX. 

final  decree  has  been  made  for  a  specific  money  recovery,  in 
pursuance  of  an  account  of  profits  and  damages,  the  case  is 
within  the  control  of  the  court.1  Attempts  to  secure  the  re- 
consideration of  interlocutory  decrees  are  not  uncommon  in 
patent  litigation.  Therefore  the  attention  may  properly  be 
given,  at  this  point,  to  the  methods  in  which  such  attempts 
may  regularly  be  made ;  and  to  the  grounds  upon  which 
they  must  be  based  in  order  to  succeed. 

§  645.  A  petition  for  a  rehearing  may  be  filed  at  any  time 
before  the  end  of  the  term  at  which  the  final  decree  in  the 
case  is  entered  and  recorded  ; 3  but  not  after  that  termina- 
tion 3  unless  the  case  is  one  which  cannot  be  appealed  to 
the  Supreme  Court ;  in  which  event  it  may  be  admitted,  in 
the  discretion  of  the  court,  at  any  time  before  the  end  of  the 
next  succeeding  term.4  Such  a  petition  may  be  based  upon 
an  apparent  error  of  the  judge  in  deciding  upon  the  case  as 
it  was  presented  to  him  in  the  record  ;  or  it  may  be  based 
on  facts  which  were  discovered  after  the  entry  of  the  decree 
which  the  petition  asks  to  have  reconsidered.  These  two 
kinds  of  rehearing  are  quite  different  from  each  other,  not 
only  in  respect  of  the  grounds  upon  which  they  are  based,  but 
also  in  respeqt  of  the  methods  by  which  they  are  obtained. 

§  646.  A  rehearing  for  matter  apparent  on  the  face  of  the 
record,  may  be  applied  for  by  a  petition  signed  by  counsel, 
and  stating  the  ground  upon  which  the  rehearing  is  prayed. 
That  ground  must  be  sufficient  to  convince  the  judge  that 
the  decree  was  perhaps  erroneous.6  In  order  to  do  that,  it 
is  necessary  to  point  out  some  particular  misapprehension 
of  the  law,  or  some  particular  mistake  in  respect  of  the  evi- 
dence, into  which  the  judge  was  unfortunate  enough  to  fall.7 
Such  a  misapprehension  may  be  established  by  showing, 


1  Reeves  «.  Keystone  Bridge  Co.  2  6  American  Diamond  Rock  Boring 
Bann.  &  Ard.  256,  1876.  Co.  «.  Sheldon,  18  Blatch.  50,  1880. 

2  Equity  Rule  88.  '  Everest  v.  Oil  Co.  22  Fed.  Rep. 

3  Barker®.  Stowe,  4  Bann.  &  Ard.  252, 1884;  Railway  Mfg.  Co.  v.  Rail- 
485, 1879.  road  Co.  26   Fed.    Rep.  411,  1886; 

4  Equity  Rule  88.  Coupe  v.  Weatherhead,  37  Fed.  Rep. 

5  Equity  Rule  88.  16,  1888. 


CHAP.  XX.]  ACTIONS   IN   EQUITY.  471 

that  since  the  case  sought  to  be  reheard  was  decided,  the 
Supreme  Court  has  settled  or  clarified  the  law  so  as  to  give 
it  a  different  character  from  that  which  it  was  then  under- 
stood to  have  ; '  but  such  a  mistake  cannot  be  established 
by  showing  that  the  judge  omitted,  in  his  opinion,  to  review 
all  the  evidence  in  the  case.'  It  is  useless  to  ask  for  a  re- 
hearing of  this  kind,  on  the  general  ground  that  the  decision 
is  thought  by  counsel  to  be  wrong.  Such  a  request  was 
once  presented  to  Justice  WOODBURY,  but  it  met  the  follow- 
ing apt  reply  :  "  It  is  hardly  in  the  power  of  the  human 
mind,  surely  not  of  the  sound  judicial  mind,  after  forming 
deliberate  opinions  after  long  argument  and  much  examin- 
ation, to  change  at  once  its  conclusions,  merely  on  a  rspeti- 
tion  of  the  same  arguments  and  the  same  facts.  Opinions 
thus  liable  to  change,  would  be  as  worthless  after  altered, 
as  they  were  before.  And  hence  it  is  wisely  provided  in 
most  judicial  systems,  as  in  ours,  that  where  nothing  new 
exists  to  justify  a  change  in  judgment,  a  general  review  on 
the  old  grounds  should  be  made  by  different  persons,  by  a 
higher  and  appellate  tribunal." 

§  647.  A  rehearing  on  account  of  newly  discovered  evi- 
dence, must  be  applied  for  as  soon  as  possible  after  its  dis- 
covery,4 by  a  petition,  verified  by  the  oath  of  the  applicant 
or  of  some  other  person/  and  stating  the  nature  of  the  al- 
leged newly  discovered  evidence,  and  that  it  was  not  known 
to  the  petitioner  till  after  the  decree  was  rendered,"  and  also 
what  diligence  was  exercised  in  searching  therefor  prior  to 
that  time,7  and  praying  for  leave  to  file  a  supplemental  bill 
in  the  nature  of  a  bill  of  review,  and  for  a  rehearing  of  the 
cause  at  the  time  when  the  issues  raised  by  that  bill  shall 


1  Wooster  «.  Handy,  21  Fed.  Rep.  26  Fed.  Rep.  243, 1886. 

51,  1884;  Spill  v.  Celluloid  Mfg.  Co.  4  Blandy  e.  Griffith,  6  Fisher,  435, 

21  Fed.  Rep.  640,  1884;  Campbell  v.  1873. 

New  York,  35  Fed.  Rep.  504,  1888.  '  Equity  Rule  88. 

8  Timken  t>.   Olin,  37  Fed.   Rep.  <  Footer.  Stein,  35  Fed.  Rep.  205, 

207,  1888.  1888. 

3  Tufts  «.  Tufts.  3  Woodbury  &  7  All  is  v.  Stowell,  5  Bann.  &  Ard. 

Minot,  429,  1847;  Gage  v.  Kellogg,  459,  1880. 


472  ACTIONS  IN   EQUITY.  [CHAP.  XX. 

be  ready  for  hearing.1  The  function  of  such  a  bill  is  to 
furnish  a  foundation  in  the  pleadings,  for  evidence  on  both 
sides  of  the  new  issues  of  fact  to  determine  which  the  rehear- 
ing is  granted.  When  such  a  petition  is  filed,  it  must  be 
supported  by  affidavits  of  the  witnesses  who  are  expected 
to  testify  to  the  newly  discovered  facts  which  are  sought  to 
be  brought  into  the  case,2  and  also  by  affidavits  showing 
that  those  facts  were  not  discovered  by  the  petitioner  till 
after  the  former  hearing,3  and  could  not,  with  reasonable 
diligence,  have  been  discovered  sooner  than  they  were.4 
Such  a  petition  may  be  answered  by  counter  affidavits  tend- 
ing to  show  that  part  or  all  of  the  statements  in  the  peti- 
tioner's affidavits  are  untrue.6  To  grant  the  prayer  of  the 
petition,  the  court  must  be  satisfied  that  the  applicant's 
affidavits  are  probably  true,"  and  clearly  material,7  and  that 
the  facts  they  set  forth  were  not  known  to  the  petitioner  at 
the  time  of  the  former  hearing,  and  could  not,  with  reason- 
able diligence,  have  been  discovered  prior  to  that  event.8 
Rehearings  will  not  be  granted  to  enable  parties  to  search 
for  further  evidence  ;9  nor  to  strengthen  their  expert  testi- 
mony,10 nor  to  amend  their  pleadings  so  as  to  make  certain 
evidence  admissible,  which  was  taken  before  the  former 
hearing,  and  was  disregarded  thereon,  because  not  supported 
by  any  pleading  ; ll  nor  to  produce  cumulative  evidence  on 

1  Dexter  «.  Arnold,  5  Mason,  310,  Rep.  72, 1882;  New  York  Sugar  Co. 

1829;  Daniell's  Chancery  Practice,  «.  Sugar  Co.  35  Fed.  Rep.  217, 1888. 

1537.  7  Buerk  v.  Imhaeuser,  2  Bann.  & 

8  Buerk  v.  Imhaeuser,  2  Bann.  &  Ard.  452,  1876. 

Ard.  452,  1876.  »  Prevost  v.  Gratz,  1  Peters'  Cir- 

3  Reeves  v.  Keystone  Bridge  Co.  2  cuit  Court  Reports,  364, 1816;  Baker 
Bann.  &  Ard.  256,  1876.  v.    Whiting.    1    Story,    234,    1810; 

4  India    Rubber    Comb    Co.     v.  Reeves  t>.   Keystone  Bridge  Co.  2 
Phelps,  4  Fisher,  317,  1870;  Hitch-  Bann.  &  Ard.    258,    1876 ;  Page  v. 
cock  v.    Tremaine,   9  Blatch.    551,  Telegraph  Co.  18  Blatch.  122,  1880. 
1872^  Barker  v.    Stowe,  4  Bann.  &  •  Munson  v.  New  York,  11  Fed. 
Ard.  405,  1878 ;  Willimantic  Linen  Rep.  72,  1882. 

Co.  v.   Clark  Thread  Co.   24  Fed.  10  Hitchcock  v,  Tremaine,  5  Fisher, 

Rep.  799,  1885.  538,  1872. 

5  Blandy  o.  Griffith,  6  Fisher,  435,  "  American  Saddle  Co.  t>.  Hogg,  6 
1873.  Fisher,  67,  1872. 

B  Munson  v.  New  York,  11  Fed. 


CHAP.  XX.]  ACTIONS  IN   EQUITY.  473 

questions  of  fact  which  were  in  issue  at  the  former  hearing ; ' 
nor  to  correct  errors  of  management  committed  by  the  peti- 
tioner's counsel.* 

§  648.  A  supplemental  bill  in  the  nature  of  a  bill  of  re- 
view, should  state  the  newly  discovered  facts  upon  which  it 
is  based,  and  should  pray  that  the  cause  may  be  heard  with 
respect  to  the  new  matter,  at  the  same  time  that  it  is  reheard 
upon  the  original  bill,  and  that  the  party  who  files  the  sub- 
ordinate bill  may  have  such  relief  as  the  nature  of  his  case 
requires.  The  proceedings  upon  a  bill  of  this  description 
are  the  same  as  those  upon  original  bills  in  general.3  No 
order  for  a  rehearing,  made  after  an  interlocutory  decree, 
and  while  an  account  of  profits  and  damages  is  being  taken 
by  a  master  in  chancery,  will  stop  the  taking  of  that  account, 
unless  the  court  enters  a  special  order  directing  the  master 
to  suspend  proceedings  therein/  And  where  a  rehearing 
results  in  a  reversal  of  an  interlocutory  decree,  which  has 
been  entered  in  favor  of  a  complainant,  and  results  also  in 
a  dismissal  of  the  complainant's  bill ;  that  dismissal  will  be 
without  prejudice  to  the  use,  in  any  subsequent  accounting, 
of  the  evidence  which  may  have  been  taken  by  the  master.* 

§  649.  A  final  decree  will  be  entered  in  favor  of  the  de- 
fendant, where  a  demurrer  to  the  whole  bill  is  sustained  on 
a  point  which  is  not  cured  by  atoendment ;  or  where  A  plea 
to  the  whole  bill  is  sustained  on  an  argument,  and  is  there- 
upon replied  to,  and  is  found  to  be  true  on  the  trial ;  or 
where  either  of  the  numerous  defences  which  may  be  made 
in  an  answer,  and  which  apply  to  the  whole  bill,  are  estab- 
lished at  an  interlocutory  hearing.  And  final  decrees  will 
be  entered  in  favor  of  complainants,  when  their  bills  have 
successfully  run  the  gauntlet  of  demurrers,  pleas,  answers, 
interlocutory  hearings,  petitions  for  rehearings,  supple- 


1  Blandy  v.  Griffith,  6  Fisfcer,  435,  s  Daniell's     Chancery     Practice, 

1873;  Pfanschmidt  v.  Mercantile  Co.  1537. 

32  Fed.  Rep.  667,  1887.  *  Daniell's     Chancery     Practice, 

*  Ruggles  v.  Eddy,  11  Blatch.  524,  1467. 

1874;  Colgate  v.  Telegraph   Co.  19  *  Campbell  v.  New  York,  35  Fed. 

Fed.  Rep.  828,  1884.  Rep.  504,  1888. 


474  ACTIONS   IN    EQUITY.  [CHAP.  XX. 

mental  bills  in  the  nature  of  bills  of  review,  accounting  be- 
fore a  master,  exceptions  to  the  master's  report,  and  final 
hearings,  through  which  original  bills  in  patent  cases  may 
regularly  be  caused  to  pass.  The  last  three  parts  of  this 
series  of  proceedings,  are  explained  in  the  chapter  on  profits, 
and  the  others  have  already  been  outlined  in  this.  As- 
suming therefore,  that  a  final  decree  has  already  been  en- 
tered for  the  complainant  or  the  defendant,  and  that  the 
costs  have  been  adjusted  and  taxed  according  to  law,1  it  is 
now  convenient  to  delineate  the  further  proceedings  to  which 
the  defeated  party  may  resort.  These  are  of  two  kinds  : 
bills  of  review,  and  appeals. 

§  650.  A  bill  of  review  is  the  proper  means  of  securing  a 
reconsideration  of  a  final  decree  after  the  expiration  of  the 
term  at  which  it  was  entered.2  Such  bills  are  of  two  sorts  : 
those  filed  to  correct  errors  apparent  on  the  face  of  the 
pleadings  or  decree  ; 3  and  those  filed  to  introduce  evidence 
of  facts  which  occurred  or  were  discovered  after  the  decree 
was  entered."  In  order  to  secure  favorable  action  on  such 
a  bill,  the  petitioner  must  first  pay  to  the  opposite  party 
the  amount  of  the  decree  which  he  seeks  to  have  reversed 
or  modified,  unless  the  court  releases  him  from  that  neces- 
sity. But  the  court  will  release  him  if  he  is  unable  to 
pay ; 5  and  will  probably  do  so  where  the  opposite  party  is 
insolvent,  if  the  petitioner  will  give  good  security  for  the 
money  decreed,  or  will  deposit  that  money  in  court.6 

§  651.  A  bill  of  review,  to  correct  errors  apparent  on  the 
pleadings  or  decree,  may  be  filed  without  leave  of  court,7 


1  Sections  543  to  549  of  this  book;  United  States,  13  Peters,  14,  1839. 
Wooster  v.  Handy,  23  Fed.  Rep.  49,          4  Story's  Equity    Pleading,    Sec- 
1885;  Spill  «.  Mfg.  Co.  28  Fed.  Rep.  tion  404. 

870,  1886;    Hill  v.  Smith,  32  Fed.          5  Story's    Equity  Pleading,    Sec- 
Rep.  753,  1887;  Ryan  v.   Gould,  32  tion  406. 

Fed.    Rep.   754,   1887;   New  York         6  Griggs  «.  Gear,  3  Gilman  (Illi- 

Belting  Co.  ».  Rubber  Co.  32  Fed.  nois),  17, 1845. 
Rep.  755,  1887.  '  Ross  v.  Prentiss,  4  McLean,  106, 

2  Story's  Equity  Pleading,    Sec-  1846;  Story's  Equity  Pleading,  Sec- 
tion 403.  tion  405. 

3  Whiting  v.   The  Bank    of   the 


CHAP.  XX.]  ACTIONS  LST   EQUITY.  475 

but  no  such  bill  will  be  considered  or  acted  upon  by  the 
court,  unless  it  is  filed  within  the  same  time  after  the  entry 
of  the  decree,  as  that  provided  for  by  statute  relevant  to 
appeals ; '  which  latter  space  is  at  present  two  years.2  Nor 
will  such  a  bill  be  entertained,  if  the  decree  which  it  was 
filed  to  correct,  was  entered  by  the  Circuit  Court,  after  an 
appeal  to  the  Supreme  Court,  and  in  pursuance  of  direc- 
tions contained  in  the  mandate  of  the  latter  tribunal.3  In 
considering  a  bill  of  review  of  this  sort,  the  court  will  con- 
fine its  examination  to  the  pleadings  and  decree  in  the 
original  action,  for  no  bill  lies  to  correct  any  errors  of  fact 
which  were  made  in  examining  or  weighing  the  evidence 
upon  which  the  decree  was  based.4 

§  652.  A  bill  of  review,  filed  to  introduce  evidence  oi  new 
facts  or  of  newly  discovered  facts,  cannot  be  filed  without 
leave  of  court.6  Where  the  case  sought  to  be  reviewed  has 
not  been  appealed,  the  application  for  leave  is  made  to  the 
court  which  rendered  the  decree,  but  where  the  case  has 
been  appealed  to  the  Supreme  Court  the  application  must 
be  presented  to  that  tribunal.6  If  that  court  decides  that 
the  leave  ought  to  be  granted,  it  will  return  the  case  to  the 
court  below,  with  directions  to  receive  and  adjudicate  the 
bill  of  review  ; '  and  thereafter  the  case  will  proceed  in  the 
lower  tribunal  much  as  it  would  have  done  if  no  appeal  had 
been  taken.  After  the  bill  of  review  has  been  litigated  and 
a  new  decree  entered,  an  appeal  will  lie  to  the  Supreme 
Court  on  the  whole  case.  The  mode  of  application  for 
leave  to  file  such  a  bill,  is  by  a  petition  stating  the  original 
proceedings  and  the  new  facts  or  newly  discovered  facts  on 
the  strength  of  which  reversal  of  the  decree  is  prayed." 

'Thomas  ®.   Harvie's  Heirs,    10  1846. 

Wheuton,  149,  1825.  *  Roemer    «.    Simon,   2  Bann.  & 

*  Revised  Statutes,  Section  1008.  Ard.  72,  1875. 

»  Southard  v.  Russell,  16  Howard,  '  Revised  Statutes,   Section    701, 

570.  1853.  Ballard  v.  Searls,  129  U.   S.    256, 

4  Whiting  v.  Bank  of  the  United  1888. 

States,  13  Peters,  14,  1839;  Story's          8  Massie's     Heirs     v.     Graham's 
Equity  Pleading.  Section  407.  Adm'rs,  3  McLean,  43,  1842. 

5  Ross  v.  Prentiss,  4  McLean,  106, 


476  ACTIONS  IN   EQUITY.  [CHAP.  XX. 

The  petition  must  be  supported  by  affidavits  stating  the 
exact  nature  of  those  facts,  in  order  that  the  court  may 
judge  of  their  materiality  and  sufficiency,  and  showing  that 
they  occurred  after  the  final  decree  was  entered,  or  if  they 
occurred  before  that  time,  that  they  were  not  discovered, 
and  could  not  with  reasonable  diligence  have  been  dis- 
covered till  afterward.1  Bills  of  review  of  this  sort  may 
be  filed  even  more  than  two  years  after  the  entry  of  the  de- 
cree, provided  they  are  filed  within  a  reasonable  time  after 
the  discovery  is  made  upon  which  they  are  based.3  Leave 
to  file  such  a  bill  will  be  granted,  in  a  proper  case,  whether 
those  facts  relate  to  issues  in  the  original  action,  or  relate 
to  defences  which  were  not  in  issue  therein ; 3  but  it  will 
not  be  granted  where  the  facts  stated  in  the  petition  are  not 
adapted,  or  are  not  sufficient,  to  have  altered  the  decree  if 
they  had  been  before  the  court  on  the  hearing,4  nor  where 
those  facts  could,  with  reasonable  diligence,  have  been  dis- 
covered before  the  decree  was  entered,6  nor  to  enable  the 
petitioner  to  introduce  evidence  to  impeach  the  character 
of  the  witnesses  upon  whose  testimony  the  decree  was 
based ;  nor  to  introduce  cumulative  testimony  on  a  point 
litigated  and  decided  at  the  hearing  ;  but  newly  discovered 
corroborating  evidence  in  writing  may  furnish  a  foundation 
for  such  leave.6  After  a  bill  of  review  to  introduce  new 
facts,  or  newly  discovered  facts,  has  been  duly  filed,  the 
opposite  party  may  plead  or  answer  thereto,  and  thus  put 
the  party  who  filed  it,  to  the  proof  of  its  allegations.7  A 
demurrer  to  a  bill  of  this  sort  is  not  appropriate,  because 
its  sufficiency  in  point  of  law  must  be  passed  upon  before 
it  can  be  filed. 

1  Story's  Equity  Pleading,    Sec-      Sections  415  and  416. 

tions  412,  413,  and  414.  *  Dexter  v.  Arnold,  5  Mason,  313, 

2  United     States     v.    Samperyac,       1829. 

Hemstead's  Circuit  Court  Reports,  8  Rubber  Co.  v.  Goodyear,  9  Wal- 

131,  1831.  lace,  806,  1869. 

3  Dexter  «.  Arnold,  5  Mason,  313,  «  Southard  v.  Russell,  16  Howard, 
1829;  United  States  v.    Samperyac,  569,  1853. 

Hemstead's  Circuit  Court  Reports,          7  Dexter  ®.  Arnold,  5  Mason,  309, 
131,  1833;  Story's  Equity  Pleading,       1829. 


CHAP.  XX.]  ACTIOXS  IN   EQUITY.  477 

§  653.  A  bill  in  the  nature  of  a  bill  of  review,  differs 
from  a  bill  of  review  only  in  respect  of  the  legal  character 
of  the  complainant.  The  latter  bill  can  be  filed  by  either 
of  the  parties  to  the  decree  which  is  sought  to  be  reviewed, 
or  by  their  respective  privies  in  representation,  such  as 
heirs,  executors,  or  administrators ;  but  the  former  is  re- 
quired to  be  filed,  where  privies  in  estate,  such  as  devisees 
or  assignees  of  an  original  party,  seek  to  secure  the  rever- 
sal or  modification  of  a  final  decree  after  the  expiration  of 
the  term  at  which  it  was  entered.1  Neither  of  these  sorts 
of  bills  is  to  be  confounded  with  a  supplemental  bill  in  the 
nature  of  a  bill  of  review.  That  is  still  another  variety, 
and  its  character  and  operation  have  already  been  outlined.1 

§  654  An  appeal  to  the  Supreme  Court  is  demandable 
from  every  final  decree,  in  cases  touching  patent  rights,  re- 
gardless of  the  amount  involved  therein,1  provided  it  is 
taken  within  two  years  after  the  entry  of  the  decree.4  But 
in  order  to  operate  as  a  supersedeas,  and  thus  stay  execu- 
tion, an  appeal  must  be  taken  within  sixty  days  after  the 
rendition  of  the  decree ;  and  indeed  an  execution  may  be 
issued,  if  an  appeal  is  not  taken  within  ten  days  after  such 
rendition.6  But  in  the  latter  case,  a  supersedeas  afterward 
obtained  will  prevent  further  proceedings  under  the  execu- 
tion, though  it  will  not  interfere  with  what  has  already 
been  done.8  The  time  within  which  appeals  may  be  taken, 
may  properly  be  held  to  begin  either  when  the  case  is 
finally  decided,  or  when  the  formal  decree  is  signed  by  the 
judge,  and  filed  with  the  clerk  of  the  court.7  When  an  ap- 
peal operates  as  a  supersedeas,  it  so  operates  only  as 
against  the  money  recovery  provided  for  in  the  decree,  and 

1  Story's  Equity    Pleading,    Sec-  1888. 
tion  409.  4  Revised  Statutes,  Section  1008. 

*  Sections   647  and    648   of   this         •  Revised  Statutes,   Sections  1012 

book.  and  1007. 

1  Revised  Statutes,   Section    699;         •  Board  of  Commissioners  t>.  Gor- 

Philip  t>.   Nock,  13  Wallace,   185,  man,  19  Wallace,  663, 1873. 
1871;  Dale  Mfg.  Co.  v.  Hyatt,  125         '  Silsby  t>.  Foote,  20  Howard,  290, 

TJ.    S.    51,    1887;   St.    Paul    Plow  1857. 
Works  t>.   Starling,  127  U.  S.  376, 


478  ACTIONS  IN   EQUITY.  [CHAP.  XX. 

not  as  against  that  part  of  the  decree  which  directs  the 
payment  of  the  master's  fees,1  nor  as  against  that  part 
which  directs  an  injunction  to  issue ; 2  but  the  judge  who 
enters  a  decree  granting  an  injunction,  has  discretionary 
power  to  suspend  or  modify  the  same  pending  an  appeal.3 

§  655.  On  the  hearing  of  an  appeal  in  the  Supreme  Court, 
the  decree  may  generally  be  attacked  by  the  appellant, 
upon  any  ground  upon  which  it  was  resisted  in  the  court 
below.  There  are  a  few  exceptions  to  this  rule.  The  decree 
cannot  be  assailed  on  the  ground  that  the  court  below  re- 
fused to  set  aside  a  decree  pro  confesso,4  or  refused  to  allow 
the  appellant  to  retract  an  admission  which  he  had  made  in 
his  pleadings ; 5  or  rendered  any  other  decision  which  be- 
longed to  the  judicial  discretion  of  the  court  to  make.  Nor 
can  a  decree  be  attacked  in  the  Supreme  Court,  on  account 
of  any  error  made  by  a  master  in  chancery  in  taking  an 
account  of  profits  or  damages,  unless  that  error  was  brought 
before  the  court  below  for  correction,  by  means  of  a  proper 
exception  to  the  master's  report.6  Where  a  decree  is  re- 
versed and  remanded  for  further  proceedings,  and  a  second 
d'ecree  is  entered  by  the  court  below  after  those  proceed- 
ings are  taken,  and  an  appeal  is  taken  from  the  second  de- 
cree, that  decree  cannot  be  assailed  on  account  of  any  errors 
that  occurred  prior  to  the  former  decree.7  No  decree  can 
be  attacked  by  the  appellee,  on  the  appellant's  appeal. 
Where  either  party  to  a  decree  intends  to  ask  the  Supreme 
Court  to  direct  it  to  be  altered,  he  must  appeal  to  that  tri- 
bunal, whether  the  other  party  appeals  or  not.8  Where 
both  parties  appeal,  both  appeals  are  heard  together  in  the 

1  Myers   v.    Dunbar,  1  Bann.  &  ard,  289,  1855. 

Ard.  565,  1874.  t  Himely  v.  Rose,  5  Cranch,  313, 

4  Whitney  v.  Mowry,   3   Fisher,  1809;  The  Santa  Maria,  10  Wheaton, 

175,  1867.  431,  1825;  American  Insurance  Co. 

3  Equity  Rule  93.  «.  Canter,  1  Peters,  511,  1828;  Corn- 

4  Dean  v.  Mason,  20  Howard,  198,  ing  v.  Troy  Iron  &  Nail  Factory,  15 
1857.  Howard,  451,  1853. 

5  Jones  v.  Morehead,  1  Wallace,  8  Corning  v.   Troy  Iron  &   Null 
155,  1863.  Factory,  15  Howard,  451,  1853. 

b  Kinsman  v.  Parkhurst,  18  How- 


CHAP.  XX.]  ACTIONS  IN   EQUITY.  479 

Supreme  Court,  and  the  complainant  in  the  court  below  is 
entitled  to  open  and  to  close  the  argument.1  A  decree  may 
also  be  attacked  by  an  appellant,  on  several  grounds  upon 
which  it  may  not  have  been  resisted  in  the  court  below. 
Non-jurisdiction  of  equity  falls  in  this  category ; "  and  so 
does  want  of  invention,  when  that  want  results  from  facts 
of  which  the  court  will  take  judicial  notice.3  Where  a  de- 
fendant interposed  several  defences  in  the  court  below,  and 
where  that  court  held  them  all  to  be  bad,  except  one  which 
it  held  to  be  good,  and  therefore  dismissed  the  bill ;  and 
where  the  Supreme  Court  on  an  appeal,  finds  the  latter  de- 
fence to  be  bad,  it  will  thereupon  decide  whether  either  of 
the  others  are  good,  and  if  it  finds  either  of  them  to  be  so, 
it  will  affirm  the  decree.4 

§  656.  After  the  Supreme  Court  has  heard  an  appeal,  it 
may  affirm  the  decree,  or  may  reverse  it,  or  may  modify  it, 
or  may  remand  the  case  to  the  court  below  for  further  pro- 
ceedings.6 Where  it  affirms  the  decree,  it  ends  the  litiga- 
tion, leaving  the  court  below  to  enforce  its  adjudication,  if 
any  enforcement  is  required.  Where  it  reverses  the  decree, 
it  generally  does  so  at  the  appellee's  costs,  so  that  the  court 
below,  when  it  receives  the  mandate,  will  have  nothing  to 
do  but  to  tax  those  costs,  and  enter  a  decree  therefor ;  and 
from  such  a  decree  there  is  no  appeal.6  When  it  modifies 
the  decree,  it  may  do  so  in  either  of  several  respects.  For 
example,  it  may  change  a  decree  which  was  entered  for  the 
appellant  with  costs,  to  one  without  costs,  and  in  that  event 
it  will  require  the  appellee  to  pay  his  own  costs  in  the  Su- 
preme Court.'  It  may  also  change  the  amount  of  the  de- 
cree, instead  of  remanding  the  case  to  the  court  below  for  a 
recomputation.8  Where  it  remands  a  case  for  further  pro- 

1  Rules  of  the  Supreme  Court  of  B  Revised  Statutes,  Section  701. 

the  United  States,  Rule  22.  •  Elastic  Fabrics  Co.  t>.  Smith,  100 

«  Hipp  «.  Babin,  19  Howard,  271,  U.  S.  Ill,  1879. 

1856.  7  O'Reilly  t.  Morse,  15  Howard, 

«  Brown  «.   Piper,   91  U.  S.   41,  121, 1853. 

1875.  8  Parks  v.  Booth,  102  U.  S.  106, 

4  Troy  Iron  &   Nail  Factory   c.  1880. 
Corning  14  Howard,  193,  1853. 


480  ACTIONS    IN    EQUITY.  [CHAP.  XX. 

ceedings,  the  proceedings  prescribed  may  even  extend  to  a 
trial  at  law,  or  by  a  jury  in  equity,  of  the  questions  of  fact 
involved  in  the  case.1 

§  657.  A  certificate  of  division  of  opinion,  is  a  means  of 
taking  questions  of  law  to  the  Supreme  Court,  where  those 
questions  arise  in  a  case  heard  by  two  judges  in  the  court 
below,  and  where  those  judges  disagree  about  their  proper 
solution.11  No  question  of  infringement  or  other  question 
of  fact  can  be  taken  to  the  Supreme  Court  in  this  method  ; 3 
and  such  a  certificate  must  state  the  precise  points  of  law 
which  are  involved,  or  the  case  will  be  remanded  without 
an  answer.4 


1  Cochrane  «.  Deener,   94  U.   S.  113  U.  S.  616,  1884. 

784,  1876.  4  Wilson  v.  Barnum,  8  Howard, 

2  Revised  Statutes,  Section  693.  258,  1850. 

3  California  Paving  Co.  ®.  Molitor, 


CHAPTEE  XXI. 


INJUNCTIONS. 


658.  Jurisdiction  to  grant   injunc- 
tions. 

659.  Preliminary  injunctions. 

660.  Bills  for  preliminary  injunc- 
tions. 

661.  Notices  of  motions  for  prelimi- 
nary injunctions. 

662.  Motions   for    preliminary    in- 
junctions. 

663.  Suspensions    of    motions    for 
preliminary  injunctions. 

664.  Temporary  restraining  orders. 

665.  Elements  of  prima  fade  rights 
to  preliminary  injunctions. 

666.  Prior  adjudication. 

667.  Public  acquiescence. 

668.  Duration  of   public  acquiesc- 
ence in  a  strict  monopoly. 

669.  Duration  of  public  acquiesc- 
ence in  a  licensed  monopoly. 

670.  Public  acquiescence  need  not 
be  universal  to  be  efficacious. 

671.  Decrees  pro  confesso. 

672.  Consent  decrees. 

673.  Defendant's  'admission  of  va- 
lidity. 

674.  Interference  decisions. 

675.  The  complainant's  title. 

676.  Infringements. 

677.  Defences  to  motions  for  pre- 
liminary injunctions ;  and  first 
by  way  of  traverse. 

678.  Defences  by  way  of  confession 
and  avoidance. 

679.  Averting  effect  of  prior  adjudi- 
cation. 


680.  Averting  effect  of  public  ac- 
quiescence. 

681.  Averting  preliminary  injunc- 
tion by  proving  repeal  or  ex- 
piration of  patent,  or  fault  in 
title  thereto. 

682.  Averting  preliminary  injunc- 
tion by  proving  license. 

683.  By  proving  estoppel. 
684  By  showing  laches. 

685.  Preliminary    injunction    must 
generally  follow  a  cause  and  an 
application  therefor. 

686.  Bonds  instead  of  injunctions, 
where  complainant  grants   li- 
censes. 

687.  Where  infringing  machinery 
embodies  non-infringing   feat- 
ures,  also  where  it  was   con- 
structed under  a  junior  patent. 

688.  Bonds  required  from  complain- 
ants in  certain  cases. 

689.  Injunctions  not  averted  by  the 
existence  of  a  remedy  at  law. 

690.  Injunctions    pro    confesso    on 
withdrawal  of  opposition  to  a 
motion  for  an  injunction. 

691.  Discretion    of    the    court    in 
granting   or   refusing    injunc- 
tions. 

692.  Motions  to  dissolve  preliminary 
injunctions. 

693.  Motions  to  dissolve  for  errors 
in  point  of  law. 

694.  Motions  to  dissolve  on  account 
of  newly  discovered  evidence. 

481 


482 


INJUNCTIONS. 


[CHAP.  xxi. 


695.  Reinstatement  of  dissolved  in- 
junctions. 

696.  Consequences  of  obedience  or 
disobedience      to     injunctions 
which  are  subsequently  dissolv 

697.  Permanent  injunctions.       [ed. 

698.  Refusal  of  permanent  injunc- 
tion, because  the  patent  has  ex- 
pired. 

699.  Because  the  complainant  has 
assigned  the  patent. 

700.  Because  the  defendant  is  dead, 
or,  if  a  corporation,  is  dissolved. 

701.  Cessation  of  infringement  no 
ground  for  refusal  to  enjoin. 

702.  Postponement  of  permanent  in- 
junctions. 

703.  Suspension  of  permanent  in- 
junctions. 


704    Dissolution  of  permanent  in- 
junctions. 

705.  Injunctions  granted  independ- 
ent   of    other    relief ;    but    no 
injunctions    issued    in    trivial 
cases,    nor    to    restrain    com- 
plainants    from     suing     third 
parties. 

706.  The    duration    of    injunctions 
generally  limited  by  the  term 
of  the  patent. 

707.  The   duration    of    injunctions 
granted  by  district  judges  in 
vacation. 

708.  Attachments  for  contempt. 

709.  Improper  defences  to  motions 
for  attachments. 

710.  Penalties  for  violations  of  in- 
junctions. 


§  658.  JUEISDICTION  to  grant  injunctions  to  prevent  the 
violation  of  patent  rights,  is  conferred  by  statute  upon  the 
same  courts  that  are  vested  with  common -law  jurisdiction 
in  patent  cases.1  The  statute  provides  that  the  jurisdiction 
shall  be  exercised  according  to  the  course  and  principles  of 
courts  of  equity,  and  upon  such  terms  as  the  court  may 
deem  reasonable.  This  twofold  provision  indicates  the 
sources  from  which  the  existing  rules  applicable  to  such 
cases  were  drawn.  They  were  drawn  from  the  ordinary 
course  and  principles  of  courts  of  equity,  and  from  a  rea- 
sonable contemplation  of  the  peculiar  circumstances  which 
attend  patent  rights  and  patent  litigation.  Some  of  those 
rules  relate  only  to  preliminary  injunctions,  and  others  re- 
late to  permanent  injunctions  alone;  and  the  residue  are 
equally  applicable  to  both.  It  is  the  plan  of  this  chapter 
to  explain  those  three  classes  of  rules,  and  to  show  how  all 
of  them  combined  make  up  a  system  which  may  guide  the 
judicial  discretion  in  nearly  every  variety  of  circumstances. 

§  659.  A  preliminary  injunction  is  one  which  is  granted 
after  the  filing  of  the  bill,  and  before  the  case  is  ready  for 


1  Revised  Statutes,  Section  4921. 


CHAP.  XXI.]  INJUNCTIONS.  483 

ah  interlocutory  hearing.  When  granted,  it  is  commonly 
granted  before  the  filing  of  the  answer ;  but  it  is  sometimes 
issued  after  that  stage  of  the  case,  and  sometimes  even  after 
the  complainant  has  introduced  all  his  prima  facie  evidence.1 
Such  an  injunction  may  be  dissolved  at  any  time,  and  a  mo- 
tion to  dissolve  it  may  be  made  whenever  an  apparent  cause 
for  its  dissolution  becomes  known  to  the  party  enjoined. 
If  not  sooner  terminated  by  dissolution,  or  by  a  certain 
statutory  limitation  hereafter  explained,  such  an  injunction 
continues  till  the  interlocutory  decree ;  and  then  it  is  dis- 
solved or  is  made  permanent  according  to  the  equities  of 
the  case  as  they  appear  on  the  interlocutory  hearing. 

§  660.  A  bill  of  complaint,  in  order  to  lay  a  foundation 
for  a  preliminary  injunction,  must  state  the  particular  prior 
adjudication  or  acquiescence  upon  which  the  presumption 
of  validity  of  the  patent  is  based,*  and  must  contain  a  spe- 
cific prayer  for  that  relief,  and  for  the  proper  writ  by  means 
of  which  that  relief  may  be  enforced,'  and  must  conform  to 
those  requisites  of  bills  in  equity  which  are  set  forth  in  the 
twentieth  chapter  of  this  book. 

§  661.  Due  notice  of  a  motion  for  a  preliminary  injunc- 
tion must  be  served  on  the  party  sought  to  be  enjoined 
from  infringing  a  patent,  before  that  motion  will  be  heard 
by  the  court.  This  rule  formerly  had  a  sufficient  founda- 
tion in  a  statute  of  1793,  which  provided  that  no  writ  of  in- 
junction should  be  granted  in  any  case  without  reasonable 
previous  notice  to  the  adverse  party,  or  his  attorney,  of  the 
time  and  place  of  moving  for  the  same.4  Portions  of  the 
section  which  contained  that  provision  are  embraced  in  the 
Kevised  Statutes,6  but  that  provision  was  omitted  from  those 
statutes  and  was  thereby  repealed."  But  there  is  still  a 


1  Union  Paper  Bag  Machine  Co.  460,  1849. 

«.  Newell,  11  Blatch.  550,  1874.  4 1  Statutes  at  Large,  Ch.  22,  Sec- 

2  Parker  v.  Brant,  1  Fisher,  59,  tion  5,  p.  334. 

1850.  *  Revised   Statutes,   Sections  716 

3  Lewiston  Falls  Mfg.  Co.  t>.  Frank-  and  720. 

lin  Co.  54  Maine,  402,  1867 ;  Union         •  Revised  Statutes,  Section  5596. 
Bank  r.  Ken-,  2  Maryland  Chancery, 


INJUNCTIONS.  [CHAP.  xxi. 

foundation  for  the  rule  which  is  stated  at  the  head  of  this 
section  :  a  foundation  not  so  direct,  but  quite  as  certain,  as 
the  other  was  while  it  existed.  The  Revised  Statutes  pro- 
vide that  the  Supreme  Court  shall  have  power  to  prescribe 
from  time  to  time,  and  in  any  manner  not  inconsistent  with 
any  law  of  the  United  States,  the  modes  of  proceeding  to 
obtain  relief  in  suits  in  equity  in  the  circuit  and  district 
courts.1  In  pursuance  of  this  authority,  the  Supreme  Court 
has  prescribed  an  elaborate  code  of  rules  of  practice  for  the 
courts  of  equity  of  the  United  States.  Rule  55  of  that 
series  provides  that  special  injunctions  shall  be  grantable 
only  upon  due  notice  to  the  other  party.  And  it  is  certain 
that  all  injunctions  to  restrain  infringements  of  patents  are 
special  as  distinguished  from  common  injunctions."  A  dif- 
ferent line  of  argument  on  this  subject,  and  one  followed  by 
a  contrary  conclusion,  is  to  be  found  in  one  reported  case,3 
but  the  reasoning  in  that  case  does  not  appear  to  be  con- 
vincing. 

§  662.  A  motion  for  a  preliminary  injunction  is  heard  in 
a  summary  way  on  ex-parte  affidavits."  The  complainant's 
affidavits  in  chief  must  show  all  the  facts  which  are  neces- 
sary to  primafcwie  entitle  him  to  such  an  injunction.5  The 
defendant's  affidavits  must  state  all  the  facts  upon  which  he. 
bases  his  defence  to  the  motion,  and  if  those  statements  are 
by  way  of  traverse,  no  further  affidavits  are  admitted  on  the 
hearing ;  but  if  they  are  by  way  of  confession  and  avoid- 
ance, the  complainant  is  permitted  to  read  affidavits  in  re- 
ply, but  to  that  reply,  no  rejoinder  from  the  defendant  is 
ever  allowed.6  All  the  affidavits  may  be  made  by  the  par- 
ties, or  by  any  other  persons ;  but  in  either  case  they  must 
state  the  facts  positively,  and  not  on  information  and  belief, 

'Revised  Statutes,  Section  917;  4  Grover&  Baker  Sewing  Machine 

Orr  «.   Littlefield,  1  Woodbury  &  Co.  v.  Williams,  2  Fisher.  183, 1860. 

Minot,  19,  1845.  8  Union  Paper  Bag  Machine  Co. 

2  High  on  Injunctions,  Section  6  ;  v.  Binney,  5  Fisher,  167,  1871. 
Purnell  v.  Daniel,  8  Iredell's  Equity  6  Day  v.  Car  Spring  Co.  3  Blatch. 
Reports  (N.  C.),  11,  1851.  154, 1854  ;  Rogers  «.  Abbot,  4  Wash- 

3  Yuengling  v.  Johnson,  1  Hughes,  ington,  514,  1825. 
607,  1877. 


CHAP.  XXI.]  INJUNCTIONS.  485 

except  upon  the  point  that  the  complainant  believes  the 
person  upon  whose  application  the  patent  was  granted,  to 
have  been  the  first  inventor  of  the  invention  for  which  it 
was  issued.1 

The  complainant's  bill  may  be  used  as  an  affidavit,*  and 
so  also  may  the  defendant's  answer,  if  it  is  on  file  when  the 
motion  for  a  preliminary  injunction  is  heard.*  But  an- 
swers are  commonly  and  properly  drawn  in  such  general 
terms  that  they  are  often  of  minor  importance  as  defences 
to  such  motions,  even  where  they  are  well  concerted  as 
pleadings.  For  example,  where  the  answer  says,  on  the 
question  of  infringement,  that  the  defendant  never  made, 
used,  or  sold  any  specimen  of  the  patented  thing ;  and 
where  the  affidavits  of  the  complainant  contain  a  descrip- 
tion of  what  the  defendant  has  done,  and  contain  proper  ex- 
pert testimony  showing  that  those  doings  constitute  in- 
fringement of  the  patent ;  the  general  denial  of  the  answer 
will  go  for  nought  on  the  hearing  of  a  preliminary  injunc- 
tion.4 The  statements  of  the  complainant's  affidavits  in 
chief  are  taken  on  the  hearing  to  be  true,  so  far  as  they  are 
uncontradicted  by  the,ani  davits  of  the  defendant ;  *  and  the 
affidavits  of  the  defendant  are  taken  to  be  true  so  far  as 
they  are  consistent  with  the  complainant's  affidavits  in 
chief,  and  are  not  contradicted  by  his  affidavits  in  reply.* 

All  affidavits  to  be  used  to  support  or  to  oppose  a  motion 
for  a  preliminary  injunction,  ought  to  be  served  on  the  op- 
posite counsel  a  reasonable  time  before  the  motion  is 
argued.  Where  that  is  not  done,  the  court  may  reject  the 
affidavits,  or,  at  its  discretion,  may  allow  them  to  be  read, 
giving  the  opposite  party  the  option  to  proceed  with  the 
hearing,  or  to  take  time  to  examine  the  affidavits,  and  where 


1  Young  t>.  Lippman,   9  Blatch.  4  Ely  t>.  Mfg.  Co.  4  Fisher,  64, 

277,  1872.  1860. 

*  Young  t>.  Lippman,   9  Blatch.  *  Wells  v.  Gill,  6  Fisher,  89,  1872. 

277,  1872.  *  Cooper  «.  Mattheys,  8  Penn.  Law 

J  Parker  «.  Brant,  1  Fisher,  58,  Journal  Reports,  40,  1842. 
1850. 


486  INJUNCTIONS.  [CHAP.  xxi. 

they  admit  of  reply,  to  take  other  affidavits  for  that  pur- 
pose.1 

§  663.  "Where,  on  the  hearing  of  a  motion  for  a  prelimin- 
ary injunction,  the  complainant's  moving  papers  are  found 
to  lack  a  necessary  point  which  is  presumably  capable  of 
being  supplied,  the  court  may  suspend  the  motion,  to  en- 
able the  complainant  to  supply  it."  Such  a  lack  and  con- 
sequent suspension  are  not  injurious  to  a  defendant,  be- 
cause they  merely  operate  to  postpone  that  which  he  de- 
sires to  be  postponed  as  long  as  possible.  No  similar  rule 
can,  however,  be  invoked  in  favor  of  a  defendant  who  has 
had  reasonable  notice  of  the  motion,  for  if  he  could  invoke 
such  a  rule,  he  could  delay  justice  by  his  own  neglect. 

If  a  demurrer  is  on  file  in  the  case,  when  a  motion  for  a 
preliminary  injunction  comes  on  to  be  heard,  the  demurrer 
will  be  first  heard  and  disposed  of,  even  though  that  pro- 
ceeding necessitates  a  postponement  of  the  hearing  of  the 
motion.  But  if  the  demurrer  is  overruled,  the  defendant, 
in  order  to  secure  leave  to  contest  the  motion  further,  must 
file  an  affidavit  that  the  demurrer  was  not  filed  for  the  pur- 
pose of  delay,  and  must  give  security  to  pay  the  complain- 
ant the  amount  of  any  money  decree  to  which  the  delay 
consequent  upon  the  demurrer  may  afterward  be  found  to. 
entitle  him.3 

§  664.  A  temporary  restraining  order  may  be  made  by 
the  court,  where  there  appears  to  be  danger  of  irreparable 
injury  from  delay,  whenever  notice  is  given  of  a  motion  for 
a  preliminary  injunction ;  and  such  an  order  may  be 
granted  with  or  without  security,  in  the  discretion  of  the 
court,  or  judge,  and  will  continue  in  force  till  the  motion  is 
decided.4  The  object  of  this  provision  appears  to  be  to 
give  the  judge  time  to  consider  whether  to  grant  a  prelim- 
inary injunction,  instead  of  deciding  the  question  immedi- 


•  Sterrick  v.  Pugsley,  1   Central  3  Woodworth     n.     Edwards, 

Law  Journal,  106,  1874.  Woodbury  &  Minot,  131,  1847. 

4  Hodge  e.  Railroad  Co.  6  Blatch,  4  Revised  Statutes,  Section  718. 
85,  1868. 


CHAP.  XXI.]  INJUNCTIONS.  487 

ately  upon  the  close  of  the  argument  of  a  motion  for  such 
a  writ.  It  does  not  appear  to  warrant  a  restraining  order 
before  notice  is  actually  served  upon  the  defendant,  nor 
indeed  before  the  motion  has  been  heard  by  the  court, 
though  the  last  member  of  this  statement  is  less  clearly 
true  than  the  first.  Even  the  first  has  been  denied  by  one 
district  judge  ;  but  in  order  to  deny  it,  he  had  to  hold  that 
a  notice  is  "  given  "  when  a  rule  to  show  cause  against  a 
motion  is  entered  in  court.1  But  the  statute  does  not  pro- 
vide for  any  rule  to  show  cause.  It  provides  for  a  notice 
which  is  given  ;  and  no  notice  can  be  said  to  be  given  until 
it  is  served. 

§  665.  In  deciding  whether  a  given  complainant  has  made 
out  a  prima  facie  case  for  a  preliminary  injunction  to  re- 
strain infringement  of  a  patent,  the  judge  is  guided  by 
the  presence  or  absence  of  two  presumptions  and  one  cer- 
tainty. Those  presumptions  relate  to  the  validity  of  the 
patent  and  to  the  defendant's  infringement  thereof,  and  that 
certainty  relates  to  the  complainant's  title  thereto.  If  that 
certainty  or  either  of  those  presumptions  are  absent  in  a 
given  case,  no  preliminary  injunction  will  be  granted  ;  but 
such  a  writ  will  be  granted  where  they  are  all  present,  un- 
less the  defendant  interposes  some  good  defence  to  the 
motion,  or  unless  the  court  takes  a  bond  from  the  defend- 
ant instead  of  subjecting  him  to  an  injunction.  A  special 
presumption  that  the  patent  is  valid,  lies  at  the  foundation 
of  a  patentee's  right  to  a  preliminary  injunction.  That 
presumption  does  not  arise  out  of  the  unattended  letters 
patent,'  but  will  always  exist  where  the  patent  has  been 
suitably  adjudicated  in  a  Federal  court,  and  there  held  to 
be  valid  ; 4  or  where  the  validity  of  the  patent  has  been 

1  Yuengling  v.  Johnson,  1  4  Orr  t>.  Littlefield,  1  Woodbury  & 

Hughes  607,  1877.  Minot,  13, 1845;  Woodworth  v.  Hall, 

*  Edward  Burr  Co.  v.  Sprinkler  1  Woodbury  &  Minot,  248,  1846; 

Co.  3'3  Fed.  Rep.  80,  1887.  Woodworth  »  Edwards,  3  Wood- 

s  Foster  v.  Crossin,  23  Fed.  Rep.  bury  &  Miuot,  120.  1847;  Gibson  e. 

401, 1885;  Dickerson  v.  Machine  Co.  Van  Dresar,  1  Bl:itch.  533,  1850; 

35  Fed.  Rep.  145,  1888.  Potter  z>.  Holland,  4  Blatch.  238. 


488 


INJUNCTIONS. 


[CHAP.  xxi. 


suitably  acquiesced  in  by  the  public  ; '  or  where  the  de- 
fendant at  bar  has  allowed  a  decree  pro  confesso  to  be  taken 
against  him  ; 2  or  where  the  defendant  does  not  deny  the 
validity  of  the  patent ; 8  or  where  he  is  estopped  from  doing 
so  ; 4  and  that  presumption  will  sometimes  exist  where  the 
patent  has  successfully  undergone  an  interference  or  other 
contested  proceeding  in  the  Patent  Office.5 

§  666.  An  adjudication  in  another  case,  in  order  to  fur- 
nish a  suitable  foundation  for  a  right  to  a  preliminary  in- 
junction, must  have  resulted  in  favor  of  the  patent  in  a  reg- 
ular hearing  in  equity,  or  on  the  trial  of  an  action  at  law.6 
Of  these,  the  former  raises  the  stronger  presumption,7  but 
most  of  the  considerations  which  apply  to  it,  apply  also  to 
the  latter.  An  interlocutory  decree  in  another  case,  is  as 
good  a  foundation  for  a  right  to  an  injunction  as  a  final 
decree  would  be  ; "  because  an  interlocutory  decree  settles 
all  pending  questions  of  validity,  and  a  final  decree  merely 
reiterates  its  conclusions  on  that  point.  An  adjudication 


1858;  Parker  t>.  Brant,  1  Fisher,  58, 
1850;  Potter  v.  Fuller,  2  Fisher,  251, 
1862;  Grover  &  Baker  Sewing  Ma- 
chine Co.  •».  Williams,  2  Fisher,  134, 
1860;  Potter  v.  Whitney,  3  Fisher, 
77,  1866;  Conover  «.  Mers,  3  Fisher, 
386,  1868;  Goodyear  Dental  Vul- 
canite Co.  v.  Evans,  3  Fisher,  390, 
1868;  Goodyear  v.  Berry,  3  Fisher, 
439,  1868;  Goodyear  v.  Rust,  3  Fish- 
er, 456,  1868;  Atlantic  Giant  Pow- 
der Co.  v.  Goodyear,  3  Bann.  & 
Ard.  167,  1877;  Green  «.  French,  4 
Bann.  &  Ard.  169,  1879;  Kirby 
Bung  Mfg.  Co.  v.  White,  5  Bann.  & 
Ard.  263,  1880;  Cary  v.  Spring  Bed 
Co.  27  Fed.  Rep.  299,  1885;  Ameri- 
can Bell  Telephone  Co.  v.  National 
Telephone  Co.  27  Fed.  Rep.  663, 
1886. 

1  Goodyear  v.  Railroad  Co.  1 
Fisher,  626,  1853;  American  Mid- 
dlings Purifier  Co.  v.  Christian,  3 


Bann.  &  Ard.  48,  1877. 

2  Schneider   v.   Bassett,   13  Fed. 
Rep.  351,  1882. 

3  Sickels   v.   Mitchell,   3  Blatch. 
548,  1857;  New  York  Grape  Sugar 
Co.  0.  American  Grape  Sugar  Co.  10 
Fed  .Rep.  835,  1882. 

4  Time  Telegraph  Co.  v.  Himmer, 
19  Fed.  Rep.  323,  1884. 

5  Pentlarge  v.  Beeston,  14  Blatch. 
354,    1877;  Smith  v.   Halkyard,   16 
Fed.   Rep.   414,  1883;  Consolidated 
Apparatus  Co.   v.  Brewing  Co.  28 
Fed.    Rep.  428,    1886;  Minneapolis 
Harvester  Works  v.  Machine  Co.  28 
Fed.   Rep.  565,    1886;  Dickerson  v. 
Machine  Co.  35  Fed.  Rep.  147, 1888. 

6  Doughty  v.  West,  2  Fisher,  559, 
1865. 

1  Goodyear  v.  Mullee,  3  Fisher, 
420,  1868. 

6  Potter  v.  Fuller,  2  Fisher,  251, 
1862. 


CHAP.  XXI.]  INJUNCTIONS.  489 

of  a  prior  suit  based  on  the  first  term  of  a  patent,  may  be 
made  the  foundation  of  a  right  to  a  preliminary  injunction 
to  restrain  infringement  of  the  extended  term  of  the  same 
patent.1  But  no  adjudication  of  a  suit  based  on  an  original 
patent  can  be  invoked  as  a  basis  for  a  preliminary  injunc- 
tion to  restrain  infringement  of  any  new  claim  contained  in 
a  reissue  thereof.3  The  difference  between  a  prior  decree 
in  equity  and  a  prior  verdict  at  law,  as  foundations  for  an 
injunction,  seems  to  be  this.  A  decree  cannot  be  ignored 
on  any  ground  which  merely  tends  to  show  that  the  judge 
who  rendered  it  misunderstood  or  misweighed  the  evidence 
upon  which  it  was  based ;  while  a  verdict  of  a  jury  may  be 
disregarded  if  the  judge  who  is  invited  to  base  a  prelim- 
inary injunction  upon  it,  is  of  opinion  that  it  was  not  justi- 
fied by  the  facts.3 

§  667.  Public  acquiescence,  sufficient  to  create  a  presump- 
tion of  validity,  and  therefore  sufficient  to  furnish  a  foun- 
dation for  a  right  to  a  preliminary  injunction,  may  arise  out 
of  either  of  two  classes  of  facts.  It  may  arise  where  the 
patentees  made  and  sold  specimens  of  the  patented  article 
for  many  years,  during  which  no  other  person  assumed  to 
make  any  such  specimens  ; 4  or  it  may  arise  where  the  pat- 
entee long  licensed  others  to  make,  use,  or  sell  such  speci- 
mens, while  nobody  assumed  to  do  either  without  such  a 
license  from  him,  and  the  acquiescence  is  quite  as  positive 
in  this  case  as  in  the  other.  But  acquiescence  in  exclusive 
use  of  a  thing  which  contains  several  patented  inventions, 
does  not  raise  a  special  presumption  of  validity  in  favor  of 
any  particular  one  of  the  patents  involved  ; 6  and  when  ac- 
quiescence stops  for  good  reasons,  the  special  presumption 
of  validity  which  rested  upon  it,  comes  also  to  an  end.* 

1  Clum  «.  Brewer,  2  Curtis,  507,  4  Sargent  «.   Seagrave,  2  Curtis, 

1855;  Tilghman  t>.  Mitchell,  4  Fish-  557,  1855;  Covert  v.  Curtis,  25  Fed. 

er.  615,  1871.  Rep.  48..  1885. 

4  Poppenhusen  t>.  Falke,  2  Fisher,  •  Upton  v.  Wayland,  36  Fed.  Rep. 

181,  1861.  691,  1888. 

8  Sickels  9.  Young,  3  Blatch.  297,  •  Wollensak  v.  Sargent,  33  Fed. 

1855  ;  Day  9.  Hartshorn,  3  Fisher,  Rep.  843,  1888. 
32, 1855. 


490  INJUNCTIONS.  [CHAP.  xxi. 

§  668.  The  length  of  time  necessary  to  make  exclusive 
possession,  of  the  first  sort,  available  in  a  motion  for  a  pre- 
liminary injunction,  depends  upon  the  nature  of  the  inven- 
tion, and  on  the  extent  to  which  a  good  invention  of  the 
sort  would  naturally  be  used  if  it  were  free  to  the  public  ; 
and  upon  the  popularity  of  that  particular  invention  with 
that  part  of  the  public  likely  to  want  an  article  of  the  kind.1 
Where  nobody  but  the  patentee  had  any  use  for  the  article 
during  the  time  of  the  alleged  acquiescence,  or  where  its 
merits  were  prized  so  low  that  nobody  else  cared  to  adopt 
it ;  no  lapse  of  time  has  any  tendency  to  raise  a  presump- 
tion that  the  patent  is  valid.  Acquiescence  in  claims  which 
nobody  cared  to  dispute  when  the  acquiescence  occurred, 
has  no  tendency  to  show  that  those  claims  are  valid.  But 
where  all  persons,  other  than  the  owner  of  the  patent,  re- 
frain from  making,  using,  or  selling  specimens  of  the  pat- 
ented article  merely  because  it  is  patented,  and  notwith- 
standing it  would  otherwise  be  for  their  interest  to  adopt 
it ;  their  acquiescence  shows  their  conviction  that  the  pat- 
ent is  valid  :  a  conviction  presumably  based .  on  inquiry, 
because  persons  are  not  likely  to  acquiesce  in  adverse  rights 
without  any  investigation  of  their  soundness.2  In  a  case  of 
the  latter  sort,  any  acquiescence  which  is  shown  by  lapse 
of  time  to  be  general  and  to  be  genuine,  will  be  sufficient  to 
sustain  a  preliminary  injunction.3  Two  years  have  been 
found  to  be  ample  in  a  case  where  the  patentee  made  and 
sold  105,000  specimens  of  his  patented  apple-paring  ma- 
chine during  that  time,4  and  in  another  case,  eight  years,  in 
which  the  patentee  made  and  sold  150  specimens  of  his 
patented  machine  for  cutting  leather  for  shoe  soles,  were . 
held  to  be  sufficient.5 

§  669.  The  length  of  time  necessary  to  make  exclusive 


1  Doughty  v.  West,  2  Fisher,  559,  Minot,  17,  1845. 

1865.  4  Sargent  v.    Seagrave,  2  Curtis, 

2  Grover  &  Baker'Sewing  Machine  557.  1855. 

Co.  v.  Williams,  2  Fisher,  134,  1860.  5  Foster  v.  Moore,  1   Curtis,  279, 

3  Orr  v.  Littlefleld,  1  Woodbury&  1852. 


CHAP.  XXI.]  INJUNCTIONS.  491 

possession,  of  the  second  sort,  available  on  a  motion  for  a 
preliminary  injunction  will  depend  largely  upon  whether 
the  licenses  granted  were  granted  in  consideration  of  the 
payment  of  substantial  royalties,  or  for  such  an  insignifi- 
cant price  as  indicates  that  they  wero  issued  for  the  sole 
purpose  of  raising  a  presumption  of  public  acquiescence. 
In  the  former  case,  it  is  safe  to  assume  that  sales  of  licenses 
will  be  quite  as  rapidly  efficacious  in  the  desired  direction, 
as  sales  of  specimens  of  the  patented  invention  ;  *  while  in 
the  latter  case,  a  long  and  genuine  payment  of  royalties 
will  be  necessary  to  give  the  licenses  any  importance  in  re- 
spect of  preliminary  injunctions  against  third  parties. 

§  670.  Public  acquiescence  is  strengthened  rather  than 
weakened,  as  a  foundation  to  a  right  to  a  preliminary  in- 
junction, by  the  fact  that  some  persons  for  a  while  refused 
to  join  in  it,  but  on  receiving  further  information,  submitted 
to  the  exclusive  right  claimed  by  the  patentee.  Such  a  sub- 
mission is  generally  the  most  persuasive  degree  of  acquies- 
cence.''1 Nor  is  universal  acquiescence  necessary  to  be  shown 
as  existing  at  the  time  of  the  motion ;  for  if  it  were  neces- 
sary and  were  shown,  it  would  prove  that  the  defendant 
himself  is  not  infringing  the  patent,  and  thus  negative  that 
part  of  the  foundation  of  the  case.3  But  a  preliminary  in- 
junction will  not  be  granted  on  any  basis  of  acquiescence 
where  the  defendant  has  been  long  in  possession  and  use 
of  the  invention,  adverse  to  the  claim  of  the  complainant, 
and  under  a  claim  and  color  of  right.4  No  acquiescence  in 
an  original  patent  can  be  made  the  basis  of  a  right  to  a  pre- 
liminary injunction  to  restrain  infringement  of  any  claim  in 
a  reissue  of  that  patent,  unless  that  claim  was  also  con- 
tained in  the  original.6 

§  671.  A  decree  pro  confesso   entered  in  a  case,  raises  a 


1  Grover&  Baker  Sewing  Machine  206.  1871. 

Co.  «.  Williams,  2  Fisher,  138, 1860.  4  Isaacs  v.  Cooper,  4  Washington, 

9  Sargent  v.  Seagrave,  2  Curtis,  259,  1821. 

556,  1855.  *  Grover  &  Baker  Sewing  Machine 

3  McComb  v.  Ernest,   1  Woods,  Co.  v.  Williams,  2  Fisher,  144, 1860. 


492  INJUNCTIONS.  [CHAP.  xxi. 

sufficient  presumption  of  the  validity  of  the  patent,  to  sup- 
port a  right  to  a  preliminary  injunction  in  that  case,1  but 
there  is  no  ground  for  giving  such  a  decree  such  an  opera- 
tion in  any  case  against  another  defendant.2 

§  672.  A  consent  decree  is  one  which  is  entered  by  the 
consent  of  the  defendant,  at  some  stage  of  the  case  after  the 
filing  of  the  answer,  and  before  the  judge  has  decided  the 
case  on  its  merits.  In  some  branches  of  jurisprudence, 
such  a  decree  may  raise  as  strong  a  presumption  of  the  va- 
lidity of  the  complainant's  case,  as  could  be  raised  by  a  de- 
cree based  on  a  decision  of  the  court.  That  may  be  the 
fact  where  the  nature  of  the  case  shows  that  it  would  have 
been  distinctly  more  advantageous  for  the  defendant  to  win 
the  suit  than  to  be  defeated.  But  in  patent  cases,  it  would 
often  be  pecuniarily  better  for  the  defendant  to  consent  to 
a  decree  against  him,  than  to  win  the  suit,  if  by  doing  the 
former  he  could  enable  the  complainant  to  secure  prelimin- 
ary injunctions  against  third  parties.  If  he  wins,  he  se- 
cures a  right  to  continue  his  doings,  but  he  also  practically 
secures  the  same  right  for  other  persons,  and  thus  throws 
the  business  open  to  general  competition.  If  by  consenting 
to  a  decree  against  himself,  a  defendant  could  secure  a 
license  on  favorable  terms,  and  could  enable  the  complain- 
ant to  prevent  all  competition  by  means  of  preliminary  in- 
junctions, it  would  frequently  happen  that  the  defendant's 
net  profits  would  be  larger  than  they  would  have  been  if  he 
had  won  the  suit.  To  win  the  suit  would  often  operate  to 
reduce  prices  and  profits,  to  an  amount  in  excess  of  the 
aggregate  of  the  decree  to  which  he  might  consent  and  the 
royalties  he  might  promise  to  pay.  In  such  a  case  a  defend- 
ant could  better  afford  to  pay  the  decree  and  the  royalties, 
than  to  have  had  complete  success  in  his  defence.  For 
these  reasons,  a  consent  decree  in  a  patent  case  can  never 
be  a  proper  foundation  for  a  right  to  a  preliminary  injunc- 
tion against  third  persons  ;  unless  it  appears  from  the  na- 


1  Schneider  v.   Bassett,   13    Fed.          2  Everett «.  Thatcher,  3  Bann.  & 
Rep.  351,  1882.  Ard.  437.  1878. 


CHAP.  XXI.]  INJUNCTIONS.  .  493 

tare  of  the  patented  thing,  or  from  convincing  evidence, 
that  the  defendant  consented  to  the  decree  because  his  de- 
fence had  become  hopeless,  and  not  because  it  had  become 
inexpedient  regardless  of  its  strength.  This  fact  can  never 
appear  from  the  nature  of  the  patented  thing,  where  that 
thing  is  an  article  of  commerce ;  because  the  making  and 
selling  of  articles  of  commerce  is  subject  to  those  laws  of 
trade  which  are  sure  to  diminish  profits  whenever  monopoly 
is  replaced  by  competition.  The  considerations  stated  in 
this  paragraph  are  doubtless  those  which  have  caused  Fed- 
eral judges  to  disregard  consent  decrees  when  deciding 
upon  applications  for  preliminary  injunctions  in-  patent 
cases.1  It  is  true  that  the  same  judge  who  made  the  third  of 
the  decisions  just  cited,  once  based  a  preliminary  injunc- 
tion partly  on  a  consent  decree  in  another  case,"  but  he  did 
so  on  the  ground  that  the  circumstances  under  which  the 
decree  was  entered,  convinced  him  that  it  was  consented  to 
because  the  defendant  was  unable  to  make  a  successful  de- 
fence. 

§  673.  Where  a  defendant  admits  or  does  not  deny,  in  his 
pleadings,  the  validity  of  the  patent  upon  which  a  prelim- 
inary injunction  is  sought  against  him  ;  there  seems  to  be 
no  reason  why  such  an  admission  or  lack  of  denial  should 
not  raise  a  sufficient  presumption  of  that  validity  to  furnish 
a  foundation  to  a  right  to  a  preliminary  injunction  in  that 
case.8  As  between  the  parties  to  a  motion,  the  court  may 
properly  assume  every  statement  of  fact  to  be  true,  which  is 
made  by  the  complainant,  and  expressly  or  tacitly  admitted 
by  the  defendant.  And  where  the  validity  of  a  patent  is 
disputed  on  no  ground  except  one  which  is  susceptible  of 
an  immediate  and  correct  decision  ;  such  a  decision  may  be 


1  Spring  v.  Domestic  Sewing  Ma-  843,  1888;  Tibbe  Mfg.  Co.  «.  Hein- 

chine  Co.  4  Bann.  &  Ard.  427, 1879;  ken,  37  Fed.  Rep.,  686,  1889. 

Hayes  v.  Leton,  5  Fed.  Rep.  521,  *  Steam  Gauge  &  Lantern  Co.  «. 

1881;  De  Ver  Warner  v.  Bassett,  7  Miller,  8  Fed.  Rep.  314,  1881. 

Fed.  Rep.  468,  1881;  Keyes  t>.  Re-  s  New  York  Grape  Sugar  Co.  «. 

lining  Co.  31  Fed.  Rep.  561,  1887  ;  American  Grape  Sugar  Co.  10  Fed. 

Wollensak  v.  Sargent,  33  Fed.  Rep.  Rep.  835,  1882. 


494  INJUNCTIONS.  [CHAP.  xxi. 

made  on  a  motion  for  a  preliminary  injunction,  and  may 
result  in  the  granting  of  the  injunction  if  the  decision  is 
favorable  to  the  patent.1 

§  674.  An  interference  decision  of  the  Patent  Office  raises 
a  sufficient  presumption  of  validity  to  furnish  a  foundation 
for  a  preliminary  injunction,  where  the  defendant  is  the 
person,  or  the  legal  representative  or  assignee  of  the  person, 
who  was  defeated  in  the  interference,  and  where  he  denies 
the  validity  of  the  patent  on  no  other  ground  than  that  the 
interference  decision  was  wrong.4  But  such  an  interference 
decision  cannot  be  invoked  against  third  parties,  because  it 
does  not  rise  to  the  dignity  and  force  of  an  adjudication  of 
a  court.3  And  it  cannot  be  invoked  as  against  any  defence 
not  involved  in  it,  because  it  has  no  relevancy  to  any  such 
defence.4 

§  675.  The  complainant's  title  to  the  patent  upon  which  a 
preliminary  injunction  is  asked  must  be  clear,  or  the  injunc- 
tion will  be  refused.5  The  best  evidence  of  that  title  is  found 
in  the  patent,  if  the  complainant  is  the  patentee  ;  and  if  he 
is  an  assignee  or  grantee,  he  should  produce  the  original 
assignments  or  grants  which  constitute  his  title,  or  produce 
duly  certified  copies  thereof.  Where  the  complainant's  title 
papers  require  judicial  construction,  in  order  to  determine  • 
their  legal  effect,  it  is  the  duty  of  the  court  to  give  them 
that  construction  upon  a  motion  for  a  perliminary  injunction, 
rather  than  to  postpone  the  question  to  a  final  hearing,  un- 
less it  is  made  to  appear  that  evidence  aliunde  is  necessary 
to  their  proper  interpretation.6 

§  676.  Infringement  or  danger  of  infringement  by  the 
defendant,  must  be  clearly  proved  by  a  complainant  in 
order  to  entitle  him  to  a  preliminary  injunction.7  Precisely 

1  Foster  v.  Crossin,  23  Fed.  Rep.      Rep,  856,  1880. 

400,  1885.  6  Mowry  v.  Railroad  Co.  5  Fisher, 

2  Pentlarge  v.  Beeston,  14  Blatch.      587,  1872. 

354,  1877;  Holliday  v.  Pickhardt,  12  6  Clum  ».  Brewer,  2  Curtis,  507, 

Fed.  Rep.  147,  1882.  1855;  Dodge  c.  Card,  2  Fisher,  116, 

8  Edward  Barr  Co.  v.    Sprinkler  1860. 

Co.  32  Fed.  Rep.  80,  1887.  '  Pullman  v.  Railroad  Co.  5  Fed. 

4  Greenwood  v.  Bracher,  1  Fed.  Rep.   72,  1880;  Marks  v.  Corn,  11 


CHAP.  XXI.]  INJUNCTIONS.  495 

what  facts  will  give  rise  to  such  a  probability  of  future  in- 
fringement, as  will  justify  a  preliminary  injunction  without 
proof  of  past  infringement,  cannot  specifically  be  stated. 
Courts  will  never  insist  on  absolute  proof  of  what  the  de- 
fendant will  do  if  not  enjoined ;  for  such  proof  can  never  be 
produced,  and  because  it  cannot  harm  a  person  to  enjoin 
him  from  doing  a  thing  which  he  would  not  do  any  way. 
A  moderate  probability  that  a  defendant  intends  to  do  some- 
thing which  would  clearly  infringe  the  complainant's  patent 
will  therefore  be  sufficient  to  entitle  the  latter  to  a  prelimin- 
ary injunction  in  an  otherwise  proper  case.1 

Proof  of  infringement  cannot  be  made  by  affidavits  which 
merely  state  that  conclusion  of  fact.  The  complainant  must 
prove  the  specific  character  of  the  defendant's  doings.* 
Upon  that  evidence  the  court  will  examine  and  decide  the 
question  of  infringement  in  the  light  of  whatever  expert 
testimony  the  case  may  contain,3  and  in  the  light  of  what- 
ever construction  of  the  patent,  it  finds  on  examination  to  be 
just,4  and  that  construction  will  generally  be  guided  and 
governed  by  the  construction  which  was  given  to  the  patent 
in  the  adjudicated  case  upon  which  the  special  presumption 
of  validity  is  based.5  But  if  the  court  is  unable  to  arrive  at 
a  conclusion  without  the  aid  of  further  evidence,  it  will 
refuse  to  grant  the  injunction  till  that  evidence  is  supplied.' 

In  order  to  entitle  a  complainant  to  a  preliminary  injunc- 
tion, it  is  not  necessary  for  him  to  prove  any  infringement 

Fed.   Rep.    900,    1881;    Coburn  v.  *  Blanchard  «.  Reeves,  1  Fisher, 

Clark.    15   Fed.    Rep.    807,    1883;  105,  1850. 

Woodworth  t>.  Stone,  3  Story,  752,  4  Many  v.  Sizer,  1  Fisher,  33, 1849; 

1845;  Poppenhusen  v.  Comb  Co.  4  Clum  ».  Brewer,  2  Curtis,  507, 1855; 

Blatch.  187,  1858;  White  t.  Heath,  Coburn  v.  Clark,  15  Fed.  Rep.  807, 

10  Fed.  Rep.  293,  1882;   Hammer-  1883. 

schlag  Mfg.   Co.  *.  Judd,  28  Fed.  *  Mallory  Mfg.  Co.  t>.  Hickok,  20 

Rep.  621,  1886;  Butz  Thermo-Elec-  Fed.  Rep.  116,  1884. 

trie  Co.  «.  Electric  Co.  36  Fed.  Rep.  •  United  States  Annunciator  Co. 

196,  1888.  t>.    Sanderson,  3  Blutch.    186,  1854; 

1  Sherman  t>.  Nutt,  35  Fed.  Rep.  Howe  «.  Morton,  1  Fisher,  600, 1860; 

149.  1888.  Boyd  «.  McAlpin,  3  McLean,  430, 

s  Kirby  Bung  Mfg.  Co.  «.  White,  1844;  Carey  «.  Miller,  34  Fed.  Rep. 

1  McCrary,  160,  1880.  392,  1888. 


496  INJUNCTION'S.  [CHAP.  xxi. 

to  have  been  committed  or  threatened  within  the  particular 
district  in  which  the  court  exercises  jurisdiction  ; '  nor  that 
the  defendant's  infringement  has  not  ceased  before  the 
motion  is  heard.2  Indeed  no  injunction  can  be  averted  by 
affirmative  evidence  that  the  defendant  has  ceased  to  infringe, 
even  though  coupled  with  a  promise  that  he  will  infringe 
no  more.3 

§  677.  The  defences  which  a  defendant  may  make  to  a 
motion  for  a  preliminary  injunction  may  be 'by  way  of  tra- 
verse, or  by  way  of  confession  and  avoidance.  A  defence 
of  the  former  sort  consists  in  denying,  and  attempting  to 
disprove,  one  or  more  of  the  facts  which  constitute  the  com- 
plainant's prima  facie  case.  A  denial  alone  is  useless,  even 
where  it  is  embodied  in  an  answer.4  Where  the  denial  is 
supported  by  affidavits  which  contradict  those  of  the  com- 
plainant, the  judge  will  refuse  the  injunction  if  he  believes 
the  defendant's  affidavits  to  be  the  true  ones,  or  if  he  is  un- 
able to  decide  which  set  of  deponents  tell  the  truth.6  No 
remedy  invoked  in  patent  cases  is  so  summary  in  operation 
or  so  dangerous  to  justice  as  a  preliminary  injunction,  and 
the  courts  will  not  apply  that  remedy  to  cases  where  the 
complainant's  prima  facie  evidence  of  a  right  thereto,  is 
overthrown  or  seriously  damaged  by  the  evidence  of  the 
defendant. 

§  678.  Defences  by  way  of  confession  and  avoidance  to 
motions  for  preliminary  injunctions,  may  confess  and  avoid 
the  adjudication  or  acquiescence  upon  which  the  plaintiff 
bases  the  presumption  of  the  validity  of  his  patent ;  or  may 
interpose  any  one  of  several  facts  entirely  outside  .of  the 
complainant's  prima  facie  case. 

1  Wilson  0.   Sherman,   1  Blatch.  Fisher,  439,  1868. 

541,  1850;  Wheeler  v.  McCormick,  3  Rumford    Chemical    Works   0. 

4  Fisher.  433,   1871;  Thompson  v.  Vice,  14  Blatch.  179, 1877;  Celluloid 

Mendelsohn,   5    Fisher,   188,   1871;  Mfg.  Co.  v.  Mfg.  Co.  34  Fed.  Rep. 

Macaulay  v.   Machine  Co.  9  Fed.  324,  1888. 

Rep.  698,  1881.  *  Clum  ».  Brewer,  2  Curtis,  507, 

8  Jenkins  t>.  Greenwald,  2  Fisher,  1855. 

37, 1857;  Potter  v.  Crowell,  3  Fisher,  6  Cooper  v.  Mattheys,  3  Penn.  Law 

112,   1866;    Goodyear    v.   Berry,   3  Journal  Reports,  40,  1842. 


CHAP.  XXI.]  INJUNCTIONS.  497 

§  679.  The  effect  of  an  adjudication  may  be  averted  by 
evidence  of  some  good  defence  to  the  patent,  together  with 
evidence  showing  that  defence  not  to  have  been  interposed 
in  the  prior  adjudicated  case.1  So  also,  the  effect  of  a  prior 
adjudication  may  sometimes  be  averted  by  showing  that 
the  case  adjudged  involved  questions  of  nicety  and  import- 
ance, and  has  been  taken  to  the  Supreme  Court  for  review,* 
or  has  gone  no  further  than  a  verdict  of  a  jury  which  is  still 
pending  on  a  motion  for  a  new  trial.3  But  courts  will  not 
always  disregard  adjudications  which  are  thus  suspended. 
They  are  a  good  foundation  for  preliminary  injunctions, 
unless  the  defendant  can  convince  the  judge  that  they  were 
wrong.4  The  effect  of  a  prior  adjudication  can  sometimes 
be  averted  by  showing  that  there  has  been  an  adjudication 
against  the  validity  of  the  patent,*  but  not  where  it  appears 
that  the  lost  cause  was  decided  on  a  part  only  of  the  ma- 
terial evidence,"  nor  can  such  an  effect  be  averted  by  showing 
that  the  validity  of  the  patent  is  in  question  in  some  other 
case  which  has  long  been  pending  and  still  awaits  adjudi- 
cation.7 Where  the  patent  sued  upon  is  a  reissue  of  the 
one  adjudicated,  a  substantial  doubt  of  the  validity  of  the 


'Parker  v.  Brant,  1  Fisher,   58,  Spreader  Co.  35  Fed.  Rep.  133, 1888 

1850;  Union  Paper  Bag  Machine  Co.  Stuart  v.  Thorman,  37  Fed.  Rep.  90, 

t>.    Binney,    5    Fisher,    168,    1871;  1888. 

American  Nicolson  Pavement  Co.  v.  *  Morris  v.  Mfg.  Co.  3  Fisher,  70, 

Elizabeth,  4  Fisher,  189, 1870;  Bailey  1866. 

Wringing  Machine  Co.  v.  Adams,  3  3  Day  «.  Hartshorn,  3  Fisher,  34, 

Bann.  &  Ard.  97,  1877;  Goodyear  v.  1855. 

Allyn,  6  Blatch.  35, 1868;  Robinson  4  Forbush  «.    Bradford,  1  Fisher, 

v.  Randolph,  4  Bann.  &  Ard.  163,  317,1858;  Day  v.  Hartshorn,  3  Fish- 

1879;   Page   v.    Telegraph   Co.    18  er,  32,  1855;  Morris  «.  Mfg.   Co.  8 

Blatch.  125,  1880;  Ladd  v.  Cameron,  Fisher,  70,  1866;  Wells  t>.   Gill,   6 

25  Fed.  Rep.  37. 1885;  Fraimt).  Iron  Fisher,  89,  1872. 

Co.  27  Fed.  Rep.  457, 1886;  Nation-  8  Keyes  v.  Refining  Co.   31   Fed. 

al  Machine  Co.  v.  Hedden,  29  Fed.  Rep.  560,  1887. 

Rep.  149,  1886;  Glaenzer  v.  Wieder-  •  United  States  Stamping  Co.   t>. 

er.  33  Fed.  Rep.  583,  1887;  Holmes  King,  4  Bann.  &  Ard.  469, 1879. 

Protective    Co.   v.   Alarm    Co.  31  '  Atlantic  Giant  Powder  Co.   e. 

Fed.    Rep.     562,    1887;    Travers  v.  Goodyear,  8  Bann.  &  Ard.  161, 1877. 


498  INJUNCTIONS.  [CHAP,  xxi 

reissue  as  a  reissue,  must  be  solved  against  a  motion  for  a 
preliminary  injunction.1 

§  680.  The  effect  of  acquiescence,  as  a  foundation  for  a 
preliminary  injunction,  may  be  averted  by  evidence  that  it 
was  not  general,  or  was  not  genuine  ;  by  proof  that  while 
some  acquiesced  in  the  patent,  many  others  did  not ;  or  by 
proof  that  those  who  did  acquiesce,  did  so  collusively  and 
not  because  they  believed  the  patent  to  be  invulnerable. 
And  the  effect  of  acquiescence  may  also  be  averted  by  evi- 
dence or  arguments  which  clearly  show  that  the  patent  is 
really  invalid.11 

§  681.  The  fact  that  the  patent  sued  upon  has  been  re- 
pealed, or  that  it  has  expired  by  its  own  limitation,  or  be- 
cause of  the  expiration  of  some  foreign  patent  for  the  same 
invention,  is  of  course  a  good  defence  to  a  motion  for  a  pre- 
liminary injunction ;  as  also  is  any  fact  which  overthrows 
the  title  of  the  complainant ;  or  any  fact  which  shows  the 
conduct  of  the  complainant  or  his  privies  to  be  unjustifi- 
able in  the  eye  of  equity.3 

§  682.  A  license  is  a  good  defence  to  a  motion  for  a  pre- 
liminary injunction ;  and  where  the  affidavits  leave  the 
existence  of  a  valid  license  in  doubt,  a  preliminary  injunc- 
tion will  be  refused.4  Where  the  question  of  license  de- 
pends upon  the  construction  of  documents,  the  court  will 
construe  them  on  a  motion  for  a  preliminary  injunction, 
unless  it  is  made  to  appear  that  evidence  exists  which  is 
proper  and  necessary  to  be  produced  in  order  to  enable 
the  judge  to  arrive  at  the  intention  of  the  parties  to  an  am- 
biguous instrument.5  Where  the  license  set  up  has  been 
forfeited  for  non-payment  of  the  royalty,  a  preliminary  in- 
junction will  be  granted,  in  an  otherwise  proper  case,  unless 


1  Poppenhusen  v.  Falke,  2  Fisher,  3  Western  Union  Telegraph  Co.  v. 
181,  1861.  Telegraph  Co.  25  Fed.  Rep.  30, 1885. 

2  Bradley  &  Hubbard  Mfg.  Co.  ®.  4  Beane  «.  Orr,  2  Bann.  &  Ard. 
The  Charles  Parker  Co.    17  Fed.  176,  1875. 

Rep.   240.   1883.     Hat-Sweat  Mfg.  5  Hodge  v.  Railroad  Co.  6  Blatch. 

Co.  v.  Sewing  Machine  Co.  32  Fed.  165,  1868. 
Kep.  403,  1887. 


CHAP.  XXI.]  INJUNCTIONS.  499 

the  defendant  pays  that  royalty  within  some  reasonable  time 
to  'be  fixed  by  the  court ; '  and  where  it  has  been  forfeited 
by  a  forbidden  use  of  the  patented  thing,  a  preliminary  in- 
junction may  be  granted  as  to  that  use,  but  not  as  to  the 
kind  of  use  authorized  by  the  license.*  The  principle  of 
these  precedents  appears  to  be  that  a  preliminary  injunc- 
tion will  not  be  used  to  enforce  a  forfeiture,  when  the  doings 
which  caused  the  forfeiture  can  be  otherwise  compensated. 
So,  also,  a  preliminary  injunction  will  be  refused  where  the 
defendant  had  a  license  which  he  forfeited  by  omission  to 
pay  the  royalty,  if  that  omission  was  necessitated  by  bad 
faith  on  the  part  of  the  complainant.3 

§  683.  Estoppel  is  also  a  good  defence  to  a  motion  for  a 
preliminary  injunction,  and  will  prevail  against  a  motion 
for  that  relief,  upon  the  same  facts  that  would  make  it  pre- 
vail in  an  action  at  law.4 

§  684.  Laches  is  a  good  defence  to  a  motion  for  a  prelimi- 
nary injunction ; &  and  delay  works  laches,  unless  it  is  ex- 
cused by  some  fact  which  renders  it  reasonable."  The 
delay  which,  if  unexcused,  works  laches  in  respect  of  an 
application  for  a  preliminary  injunction,  is  that  which  occurs 
after  the  infringement  sued  upon  was  committed,7  and  not 
any  delay  which  occurred  before  that  time.  Delay  after 
the  infringement,  may  occur  before  the  suit  is  brought,  or 
it  may  occur  after  that  event,  and  before  any  motion  is 
made  for  a  preliminary  injunction. 

Three  months'  delay  of  the  first  kind,  for  which  there  was 
no  particular  excuse,  and  which  caused  no  injury  to  the  de- 

1  Woodworth  v.  Weed,  1  Blatch.  4  Sections  467  to  469  of  this  book. 

165,  1846;  Goodyear  9.  Rubber  Co.  »  Hockholzer  v.  Eager,  2  Sawyer, 

8  Blatch.  455,  1856.  363,  1873;  Keyes  v.  Refining  Co.  31 

1  Wilson  v.  Sherman,  1  Blatch.  Fed.  Rep.  560,  1887. 

536,  1850.  «  Wortendyke  v.  White,  2Bann.  & 

3  Crcmell  9.  Parmeter,  3  Bann.  &  Ard.  26,  1875 ;  Green  v.  French,  4 

Ard.  480,  1878;  Washburn  &  Moen  Bann.  &  Ard.  169, 1879;  Collignon  v. 

Mfg.  Co.  9.  Barbed  Wire  Fence  Co.  Hayes,  8  Fed.  Rep.  912, 1881. 

22  Fed.  Rep.  712,  1884;  Washburn  '  American  Middlings  Purifier  Co. 

&  Moen  Mfg.  Co.  v.  Scutt  Co.   22  «.  Christian,  3  Bann.  &  Ard.  50, 

Fed.  Rep.  710,  1884.  1877. 


INJUKCTIONS.  [CHAP.  xxi. 

fendant,  lias  been  held  not  to  constitute  laches  ; 4  but  in  an- 
other case,  eighteen  months',2  and  in  another,  two  years' 
delay  was  held  to  have  that  effect ; 3  and  in  still  another,  a 
delay  of  two  years  by  the  then  owners  of  the  patent,  was 
held  to  preclude  their  assignees  from  obtaining  a  prelimi- 
nary injunction.4  Two  years'  delay  to  sue  was  excused  in 
one  case  on  the  ground  that  the  complainant  was  much  oc- 
cupied with  other  business  during  the  time,  and  that  he 
repeatedly  notified  the  defendant  to  cease  his  infringing.5 
The  pendency  of  a  test  case  under  a  patent  is  also  a  good 
excuse  for  delay  in  bringing  actions  against  other  infringers, 
when  those  other  infringers  interpose  the  defence  of  laches 
to  a  motion  for  a  preliminary  injunction.8 

Delay  after  a  suit  is  begun  will  constitute  such  laches  as 
will  defeat  an  application  for  a  preliminary  injunction,  if 
that  delay  continues  till  the  defendant  has  closed  his  evi- 
dence for  the  interlocutory  hearing  of  the  case  ; '  and  a  forti- 
ori when  it  continues  till  the  case  is  about  to  be  argued  on 
the  interlocutory  hearing.8 

§  685.  Where  the  complainant  has  made  out  a  prima  facie 
case  for  a  preliminary  injunction,  and  where  the  defendant 
has  not  overthrown  that  case,  the  court  is  generally  bound 
to  grant  such  an  injunction "  upon  all  or  upon  part  of  the 

1  Union  Paper  Bag  Machine  Co.  7  Wooster  v.  Machine  Co.  4  Bann. 

v.  Binney,  5  Fisher,  167,  1871.  &  Ard.  319,  1879. 

4  Hockholzer  v.  Eager,  2  Sawyer,  8  Andrews  v.  Spear,  3  Bann.  & 

363,  1873.  Ard.  80,  1877. 

3  Sperry  ».   Ribbans,  3  Bann.  &  9  Gibson  v.  Van  Dresar,  1  Blatch. 
Ard.  261,  1878.  535,    1850 ;    Sickels  e.    Mitchell,   3 

4  Spring  v.  Machine  Co.  4  Bann.  Blatch.  548,  1857;  Sickels  v.  Tiles- 
&  Ard.  428,  1879.  ton,  4  Blatch.  109,  1857  ;  Potter  v. 

6  Collignon  v.  Hayes,  8  Fed.  Rep.  Fuller,  2  Fisher,  251, 1862;  Conover 

912,  1881.  v.  Mers,  8  Fisher,  386,  1868;  Ely  t>. 

6  Van  Hook  v.  Pendleton,  1  Blatch.  Mfg.  Co.  4  Fisher,  64,  1860;  Rum- 

187, 1846;  Rumford  Chemical  Works  ford  Chemical  Works  v.  Vice,  14 

9.  Vice,  14  Blatch.  181,  1877;  Green  Blatch.  181,  1877  ;  American  Mid- 

t>.  French,  4  Bann.  &  Ard.  169, 1879;  dlings  Purifier  Co.  v.  Christian,  3 

Colgate  v.  Gold  &  Stock  Telegraph  Bann.  &  Ard.  54,  1857  ;  Green  v. 

Co.  4  Bann.  &  Ard.  425,  1879.  French,  4  Bann.  &  Ard.  169,  1879. 


CHAP.  XXI.]  INJUNCTIONS.  501 

claims  of  the  patent,  according  to  the  merits  of  the  case.1 
Under  some  circumstances,  however,  the  court  can  give  the 
defendant  the  option  to  submit  to  such  an  injunction,  or  to 
give  a  bond  to  secure  any  decree  for  profits  or  damages 
which  may  ultimately  be  awarded  against  him  ;  but  a  bond 
can  be  required  only  in  a  case  where  an  injunction  must 
issue  if  the  bond  is  not  given.*  The  circumstances  under 
which  it  is  proper  to  give  the  defendant  that  option  include 
the  following. 

§  686.  Bonds  may  be  laken,  instead  of  preliminary  injunc- 
tions being  imposed,  if  the  complainant  habitually  avails 
himself  of  his  exclusive  right  by  receiving  royalties  for 
licenses,  rather  than  by  making  and  selling,  or  making  and 
using,  the  patented  article  himself  while  permitting  no  other 
to  do  so.3  But  where  the  complainant  is  able  and  willing 
to  supply  the  market  for  that  article,  the  fact  that  the  de- 
fendant is  willing  to  take  a  license,  and  able  to  pay  for  one, 
does  not  entitle  him  to  the  option  of  giving  bonds,  if  the 
complainant  declines  to  give  him  a  license.4 

§  687.  So  also,  a  defendant  is  entitled  to  the  option  of 
giving  bonds  instead  of  being  enjoined,  where  his  infringing 
machinery  contains  costly  features  which  are  not  covered  by 
the  complainant's  patent,*  or  where  the  infringing  article 
was  purchased  in  good  faith,  having  been  constructed  in 
conformity  to  a  junior  patent;6  or  where  it  was  so  con- 

1  Colt  t>.  Young,  2  Blatch.  471,  Grape  Sugar  Co.  «.  American  Grape 

1852 ;  Potter  v.  Holland,  1   Fisher,  Sugar  Co.  10  Fed.  Rep.  837,  1882 ; 

382,  1858.  McMillan  v.  Conrad,  16  Fed.  Rep. 

*  Forbush  t>.  Bradford,  1  Fisher,  128, 1883;  Eastern  Paper  Bag  Co.  «. 

317.  1858;  American  Middlings  Pu-  Nixon,  35  Fed.  Rep.  752,  1888. 

rifler  Co.  «.  Atlantic  Milling  Co.  8  4  Baldwin  «.  Bernard,  5  Fisher, 

Bann.  &  Ard.  173,  1877.  447,  1872 ;  Westinghouse  Air  Brake 

3  Howe  v.  Morton,  1  Fisher,  601,  Co.  «.  Carpenter,  32  Fed.  Rep.  545, 

1860;    Hodge    v.    Railroad   Co.    6  1887. 

Blatch.  166, 1868;  Dorsey  Harvester  *  Howe  v.  Morton,  1  Fisher,  587, 

Rake  Co.  v.  Marsh,  6  Fisher,  387.  1860  ;   Stainthorp   t>.   Humiston,   2 

1873;  Colgate  t>.  Gold  &  Stock  Tel-  Fisher,  811,  1862;  Eagle  Mfg.  Co.  9. 

egraph  Co.  16  Blatch.  503.  1879;  Plow  Co.  36  Fed.  Rep.  907,  1888. 

Kirby  Bung  Mfg.  Co.  «.  White,  1  •  United  States  Annunciator  Co. 

McCrary,    155,    1880  ;    New  York  t>.  Sanderson,  3  Blatch.  184,  1854. 


502  INJUNCTIONS.  [CHAP.  xxi. 

structed  by  the  defendant  himself ;  or  where  the  defendant 
is  only  a  seller  of  specimens  of  the  patented  article,  a  suit 
being  pending  against  the  manufacturer  from  whom  he  re- 
ceived those  specimens ; l  or  where  the  prior  adjudication 
upon  which  the  right  to  a  preliminary  injunction  is  based, 
has  been  carried  to  the  Supreme  Court,  and  is  still  pending 
there  ; 2  or  where  its  correctness  is  doubted  by  the  court ; 3 
or  where  the  injunction,  if  granted,  would  be  very  damag- 
ing to  the  interests  of  the  defendant,  and  not  particularly 
beneficial  to  the  legitimate  rights  of  the  complainant ; 4  or 
where  public  policy  forbids  a  discontinuance  of  the  defend- 
ant's use  of  the  patented  invention ; 5  or  where  the  com- 
plainant does  not  himself  employ  the  invention  ; 6  or  where, 
for  any  reason,  a  preliminary  injunction  would  operate  un- 
justly.7 It  is  no  part  of  the  legitimate  office  of  a  prelimi- 
nary injunction  to  force  the  defendant  to  compromise  a 
disputed  claim  ; "  nor  to  compel  him  to  give  the  complain- 
ant a  contract  to  purchase  specimens  of  the  patented  thing.9 
But  in  the  absence  of  every  special  reason  for  giving  the 
defendant  the  option  of  giving  bonds,  instead  of  submitting 
to  an  injunction,  that  option  cannot  be  demanded  by  him  ; I0 
nor  ought  it  to  be  granted  by  the  court.11  Where  the  de- 
fendant is  entitled  to  the  option  of  giving  bonds  or  being 


1  Irwin  v.  McRoberts,  4  Bann.  &  « Hoe  ».  Knap,  27  Fed.  Rep.  212, 
Ard.  414,  1879.  1886. 

2  Wells  v.  Gill,  6  Fisher,  93,  1872.  7  Union  Paper-Bag  Machine  Co.  v. 
a  Steam  Gauge  &  Lantern  Co.  v.  Binney,  5  Fisher,  169,  1871. 

Mfg.  Co.  25  Fed.  Rep.  493,   1885;  •  Morris  v.  Mfg.  Co.  3  Fisher,  70, 

Eastern  Paper  Bag  Co.  v.  Nixon,  35  1866. 

Fed.  Rep.  752,  1888.  9  American    Nicolson    Pavement 

4  Morris  v.  Mfg.  Co.  3  Fisher,  68,  Co.  ».  Elizabeth,  4  Fisher,  197,  1870. 

1866;  Morrisw.  Shelbourne,  4  Fisher,  10  Consolidated    Fruit-Jar    Co.    •». 

377,  1871 ;  Dorsey  Harvester  Rake  Whitney,  1  Bann.  &  Ard.  361,  1874. 

Co.  v.  Marsh,  6  Fisher.   387,  1873 ;  »  Gibson  v.  Van  Dresar,  1  Blatch. 

Kirby  Bung  Mfg.   Co.  •».  White,  1  532,  1850;  Tracy  v.  Torrey,  2  Blatch. 

McCrary,  155,  1880;  Hoe  v.  Boston  275,  1851;  Tilghman  <o.  Mitchell,  4 

Daily  Advertiser,  14  Fed.  Rep.  914,  Fisher,  615,  1871;  McWilliams  Mfg. 

1883.  Co.  v.  Blundell,  11  Fed.  Rep.  419, 

6  Guidet  v.  Palmer,  10  Blatch.  220,  1882. 
1872. 


CHAP.  XXI.]  INJUNCTIONS.  503 

enjoined,  and  chooses  the  former  alternative,  but  is  unable 
to  furnish  the  bonds  promptly,  an  injunction  may  issue 
against  him,  coupled  with  an  order  for  its  dissolution  when- 
ever the  proper  bonds  are  approved  and  filed.1 

§  688.  Bonds  may  be  required  from  a  complainant,  under 
some  circumstances,  before  a  preliminary  injunction  will  be 
granted.*  Such  bonds  are  conditioned  on  the  ultimate  suc- 
cess of  the  complainant  in  sustaining  his  claim,  and  may  be 
required  in  a  case  where  the  injunction,  if  granted,  will 
cause  serious  injury  to  the  defendant.3  If  that  is  also  a 
case  where  the  defendant  is  entitled  to  avert  the  injunction 
by  giving  a  bond,  that  option  will  first  be  given  to  him.  If 
he  chooses  to  file  a  bond,  of  course  none  will  be  required 
from  the  other  side,  but  if  he  prefers  to  submit  to  an  in- 
junction, the  injunction  will  be  granted  only  upon  the  filing 
of  a  proper  indemnity  bond  by  the  complainant. 

§  689.  A  preliminary  injunction  cannot  be  averted  on  the 
sole  ground  that  an  action  at  law  for  the  damages  to  be 
caused  by  the  infringement,  would  be  a  plain,  adequate, 
and  complete  remedy  therefor.  In  many  cases  that  would 
not  be  true,  and  the  court  cannot  determine  on  affidavits 
whether  it  would  be  true  in  a  particular  case  or  not.  A 
motion  for  a  preliminary  injunction  is  not  to  be  defeated  on 
a  possibility  that  the  complainant  might  be  able  to  obtain 
damages  for  the  wrong  which  he  seeks  to  prevent.  But 
even  where  it  is  plain  that  the  damages  recoverable  in  an 
action  at  law,  would  be  as  beneficial  to  the  complainant  as 
an  injunction  would  be,  that  fact  does  not  oust  the  right  of 
the  complainant  to  the  latter  relief.  The  case  is  analogous 
to  actions  in  equity  for  the  specific  performance  of  contracts 

1  Brooks  «.  Bicknell,  3  McLean,  *  Tobey  Furniture  Co.  v.  Colby,  85 
250, 1843;  Foster  v.  Moore,  1  Curtis,  Fed.  Rep.  594,  1888. 
279. 1852;  Howe  «.  Morton,  1  Fisher,  3  Orr  ».  Littlefield,  1  Woodbury  & 
586,  1860;  Stainthorp  v.  Humiston,  Minot,  20,  1845;  Brammer  «.  Jones, 
2  Fisher,   311,  1862  ;    Goodyear  t>.  8  Fisher,  340,  1867;  Shelly  v.  Bran- 
Hills,  3  Fisher,  134,  1866;  Sykes  v.  nan,  4  Fisher,  198,  1870;  Consoli- 
Manhattan  Co.  6  Blatch.  496,  1869;  dated  Fruit-Jar  Co.  v.  Whitney,  1 
Gilbert  &  Barker  Mfg.  Co.  F.  Buss-  Bann.  &  Ard.  361,  1874. 
ing,  12  Blatch.  426,  1875. 


504  INJUNCTIONS.  [CHAP.  xxi. 

to  sell  real  property.  The  bills  in  such  cases  seldom  show, 
and  never  are  required  to  show,  that  an  action  at  law  for 
damages  would  not  be  a  plain,  •  adequate,  and  complete 
remedy  for  the  failure  to  perform.  "  Ordinarily  a  vendor, 
in  the  recovery  of  pecuniary  damages,  has  an  adequate 
remedy  at  law,  but  he  has  a  choice  of  remedies.  He  may 
resort  either  to  a  court  of  law  or  a  court  of  equity."  '  Bills 
for  preliminary  injunctions  in  patent  cases  are  never  ob- 
noxious to  Section  723  of  the  Kevised  Statutes,  because  the 
word  "  case"  in  that  section  is  to  be  interpreted  specifically 
and  not  generically.  "  Suits  in  equity  shall  nofc  be  sustained 
in  either  of  the  courts  of  the  United  States  in  any  case  where  a 
plain,  adequate,  and  complete  remedy  may  be  had  at  law." ' 
This  statute  regards  an  action  in  equity  to  restrain  infringe- 
ment of  a  patent,  as  a  case  for  an  injunction,  and  not  merely 
as  a  patent  case.  It  therefore  opposes  no  obstacle  to  the 
jurisdiction  of  equity  in  such  a  case. 

§  690.  Where  the  defendant  withdraws  his  opposition  to 
a  motion  for  a  preliminary  injunction  before  the  motion  is 
decided,  the  injunction  will  be  granted  pro  confesso,  and  the 
court  will  decline  to  render  a  decision.3  That  is  to  say  :  a 
consent  decree  will  be  entered  as  a  consent  decree,  and  not 
as  one  based  on  a  conclusion  of  the  judicial  mind.  If  this 
rule  were  otherwise,  parties  between  whom  there  continued 
to  be  no  real  contest  might  manage  to  secure  decisions  from 
courts  which  would  operate  to  their  mutual  advantage,  and 
to  the  serious  disadvantage  of  strangers  to  the  litigation. 

§  691.  The  discretion  of  the  court  was  said,  in  some  of 
the  older  cases,  to  be  the  real  criterion  of  judgment,  when 
deciding  motions  for  preliminary  injunctions  in  patent  cases. 
The  doctrine  was  a  necessity  in  the  beginning  of  the  evolu- 
tion of  the  patent  laws,  because  the  judges  could  then  find 
but  few  precedents  to  guide  or  to  warn.  At  present  the 
fact  is  otherwise.  Approved  precedents  can  now  be  found 


1  Crary   v.    Smith,    2    Comstock         3  American  Middlings  Purifier  Co. 
(N.  Y.),  62,  1848.  ».  Vail,  15  Blatch.  315,  1878. 

*  Revised  Statutes,  Section  723. 


CHAP.  XXI.]  INJUNCTIONS.  505 

on  nearly  every  point  that  can  arise.  No  other  branch  of 
the  patent  law  is  proportionately  richer  in  that  respect, 
than  the  branch  which  relates  to  preliminary  injunctions. 
But  there  is  still  a  sense  in  which  the  granting  or  refusing 
such  a  writ  may  truly  be  said  to  rest  in  the  discretion  of  the 
judge.  It  so  rests,  in  the  sense  that  no  appeal  lies  from  his 
decision.1  But  that  fact  is  not  a  reason  why  a  judge  should 
be  asked  to  disregard  precedents  when  making  up  his  ju- 
dicial opinion.  He  is  equally  bound  by  his  oath  and  by  his 
honor  to  decide  cases  according  to  law,  whether  an  appeal 
lies  from  his  decision  or  not.  Indeed,  if  it  is  possible  for  a 
judge  to  hew  closer  to  the  line  of  statutes  and  of  precedents 
in  one  class  of  cases  than  he  ought  to  do  in  all  classes,  he 
will  be  particularly  scrupulous  to  do  so  in  whatever  class 
his  decision  will  be  final,  and  any  error  remediless. 

§  692.  A  motion  to  dissolve  a  preliminary  injunction  may 
bo  made  at  any  time,"  upon  reasonable  notice  to  the  com- 
plainant's solicitor  ;  *  and  it  will  be  promptly  granted  where 
the  judge  becomes  convinced  that  the  granting  of  the  in- 
junction was  erroneous  in  point  of  law ; 4  or  where  the  de- 
fendant properly  proves  any  fact  which  would  have  been 
fatal  to  the  motion  for  the  preliminary  injunction,  if  pre- 
sented at  the  time  that  motion  was  heard,  and  shows  that 
the  evidence  could  not  with  reasonable  diligence  have  been 
presented  at  that  hearing.5  So  also,  a  dissolution  of  a  pre- 
liminary injunction  may  be  based  on  a  fact  which  arose 
after  the  injunction  was  granted :  for  example,  on  the  fact 
that  the  complainant,  after  that  event,  assigned  all  his  in- 

1  Earth  Closet  Co.  t>.  Fenner,  5  4  Steam  Gauge  &  Lantern  Co.  t>. 

Fisher,  20.  1871.  Miller,  11  Fed.  Rep.  719,  1882. 

*  Minturn  v.  Seymour,  4  John-  &  Woodworth  «.  Rogers,  8  Wood- 
son's  Chancery  (N.  Y.),  173,  1819;  hury  &  Miuot,  135,  1847;  Hussey 
Cammack  v.  Johnson,  2  New  Jersey  v.  Whiteley,  2  Fisher,  125,  1860  ; 
Equity,  163,  1839 ;  Jones  v.  Bank,  5  Young  v.  Lippman,  5  Fisher,  230, 
How.  (Miss.)  43,  1840.  1872 ;  Cary  v.  Spring  Bed  Co.  26 

3  Wilkins  v.  Jordan,  3  Washing-  Fed.  Rep.  38,  1886 ;  Huntiugton  t>. 

ton,  226,  1813 ;  Caldwell  v.  Waters,  Heel  Plate  Co.  33  Fed.  Rep.  838, 

4  Cranch's  Circuit  Court   Reports,  1888. 
577,  1835. 


506  INJUNCTIONS.  [CHAP.  xxi. 

terest  in  the  future  duration  of  the  patent  to  another ; 1  or 
on  the  fact  that  he  omitted  to  prosecute  his  case  toward  an 
interlocutory  hearing  with  the  speed  which  the  rules  of 
court  require.2 

§  693.  A  motion  to  dissolve  an  injunction  for  error  in 
point  of  law,  must  be  based  on  a  point  which  was  estab- 
lished after  the  injunction  was  granted,  or  which  was  obvi- 
ously overlooked  or  misweighed  by  the  judge  at  that  time. 
It  would  be  unprofessional  as  well  as  unavailing  for  counsel 
to  move  a  dissolution  on  the  ground  that  the  judge  wrongly 
reasoned  out  his  conclusion  from  the  premises  from  which 
he  proceeded.  Courts  ought  not  to  be  asked  to  change  their 
judgments  on  points  of  law,  unless  the  law  has  changed  or 
been  newly  formulated  in  the  mean  time,  or  unless  some 
special  error  can  be  pointed  out.  Few  things  are  more 
trying  to  the  patience  of  judges,  or  more  useless  to  the  in- 
terests of  clients,  than  the  repetition  of  old  and  well  under- 
stood arguments. 

§  694.  Motigns  to  dissolve  an  injunction  on  account  of 
newly  discovered  facts,  require  the  mover  to  assume  the  bur- 
den of  establishing  those  facts,  because  when  an  injunction 
is  once  granted,  it  is  presumed  to  have  been  granted  right- 
fully, until  the  contrary  is  made  to  appear.3  The  contrary 
can  seldom  or  never  be  made  to  appear  in  a  patent  case,  by 
means  of  the  defendant's  answer ;  because  the  ans\ver,  as 
far  as  it  refers  to  the  validity  of  the  patent  and  of  the  com- 
plainant's title  thereto,  is  generally  made  on  information 
and  belief  only,  and  as  far  as  it  refers  to  the  defendant's  in- 
fringement, it  amounts  only  to  a  general  denial.  Where 
an  answer  is  on  file  at  the  time  the  motion  to  dissolve  is 
heard,  the  injunction  will  not  be  dissolved  on  the  strength 
of  any  facts  which  are  not  set  up  in  the  answer ; 4  but 
whether  an  answer  is  on  file  at  that  time  or  not,  the  facts 


1  Parkhurst  v.  Kinsman,  1  Blatch.  s  Woodworth  ».  Rogers,  3  Wood- 
489,  1849.  bury  &  Minot,  143,  1847. 

2  Robinson  v.  Randolph,  4  Bann.  4  Union  Paper  Bag  Machine  Co. 
&  Ard.  318,  1879.  «.  Newell,  11  Blatch.  550,  1874. 

> 


CHAP.  XXI.]  INJUNCTIONS.  507 

upon  which  the  motion  is  based  must  be  shown  by  affida- 
vits or  by  other  admissible  evidence ;  though,  if  an  answer 
is  on  file,  it  may  be  used  as  an  affidavit  as  far  as  its  state- 
ments are  made  on  the  knowledge  of  the  defendant,  and  not 
merely  on  information  and  belief. 

Affidavits  and  other  evidence  to  disprove  the  statements 
of  fact,  contained  in  the  moving  papers  of  the  defendant, 
may  be  introduced  by  the  complainant ;  and  counter  evi- 
dence from  the  defendant  is  then  admissible  to  disprove  the 
complainant's  answering  allegations.  After  this,  it  becomes 
the  duty  of  the  judge  to  balance  the  documents  and  ascer- 
tain where  the  weight  of  them  is ; l  and  he  will  decide  the 
motion  against  the  mover,  unless  his  papers  preponderate." 
Service  on  the  opposite  party,  before  the  motion  is  heard, 
of  the  affidavits  upon  which  a  motion  to  dissolve  an  injunc- 
tion is  made  or  is  resisted,  seems  to  be  called  for  by  the 
same  reasons  which  call  for  similar  service  of  the  affidavits 
upon  which  motions  for  preliminary  injunctions  are  based 
or  are  withstood.3 

§  695.  A  motion  to  reinstate  a  dissolved  injunction  may 
be  made  at  any  time ;  but  it  will  not  be  granted  on  the 
same  state  of  the  case  as  that  which  existed  when  the  in- 
junction was  dissolved.  So,  also,  a  reinstated  preliminary 
injunction  may  be  again  dissolved  on  any  new  state  of  facts 
which  show  that  its  continuation  would  be  unjust.4  In 
patent  cases,  however,  it  will  seldom  occur  that  the  alter- 
nate process  of  issuing  and  dissolving  preliminary  injunc- 
tions can  be  carried  further  than  the  first  dissolution.  After 
that,  the  court  will  let  the  matter  rest  till  the  interlocutory 
hearing,  unless  a  case  of  great  clearness  and  pressing  neces- 
sity is  presented  for  further  preliminary  action. 

§  696.  While  an  injunction  is  in  force,  it  must  be  obeyed, 
even  though  it  ought  never  to  have  been  granted.5  But  an 


1  Woodworth  v.  Rogers,  3  Wood-  3  Section  662  of  this  book, 

bury  &  Minot,  144,  1847.  4  Tucker  v.  Carpenter,  1   Hemp- 

*  Sparkman  v.  Higgins,  1  Blatcb.  stead,  441,  1841. 

207,  1849.  s  Moat  «.    Holbein,    2   Edwards' 


508  INJUNCTIONS.  [CHAP.  xxi. 

injunction  is  not  in  force  if  it  was  issued  against  a  defend- 
ant over  whom  the  court  had  no  jurisdiction.  No  court  has 
any  authority  to  issue  an  injunction  against  such  a  person. 
And  where  courts  act  without  authority,  their  orders  are 
nullities.  They  are  not  voidable,  but  simply  void.1  It  fol- 
lows from  these  rules,  that  if  a  Federal  court  were  to  issue 
an  injunction  against  a  defendant  before  he  is  served  with  a 
subpoena  ad  respondendum  in  the  case,  that  injunction  would 
be  void  and  could  safely  be  disregarded  ; 2  but  where  an  in- 
junction is  granted  after  such  service,  and  upon  due  notice 
of  the  motion  therefor,  it  must  be  obeyed,  no  matter  how 
obviously  unjust  and  unwarrantable  its  granting  may  have 
been.  And  when  an  injunction  is  dissolved  which  ought 
not  to  have  been  granted,  the  enjoined  party  is  without  re- 
dress for  the  injury  or  inconvenience  he  may  have  suffered, 
unless  the  court,  when  granting  the  injunction,  made  an 
order  that  the  complainant  should  pay  the  defendant  such 
resulting  damages  as  he  might  sustain  in  case  it  be  finally 
decided  that  the  injunction  ought  not  to  have  been  granted  ; 
or  required  the  complainant  to  file  a  bond  to  secure  those 
damages,  as  a  condition  precedent  to  the  issuing  of  the 
injunction.3 

§  697.  A  permanent  injunction  follows  a  decision  in  favor 
of  the  complainant  on  the  interlocutory  hearing  of  a  patent 
case,  unless  some  special  reason  exists  for  its  being  refused, 
or  being  postponed  till  after  the  master's  report,  or  being 
suspended  pending  an  appeal.4 

§  698.  A  refusal  of  a  permanent  injunction  will  generally 
follow  from  the  fact  that  the  patent  has  expired  at  the  time 

Chancery  (N.  Y.),  188,  1834;  Sulli-  2  Sickles  «.  Borden,  4  Blatch.  14, 

van  v.  Judah,  4  Paige  (N.  Y.),  444,  1857;  Section  661  of  this  book. 

1834;  Richards  «.  West,  2  Green's  3  Lexington  &  Ohio  Railroad  Co. 

Chancery  (N.  Y.),  456, 1836;  People  v.   Applegate,   8  Dana  (Ken.),  289, 

«.  Sturtevant,  5  Selden  (N.  Y.),  263,  1839;   Sturgis  v.    Knapp,    33    Ver- 

1853;  Erie  Railway  Co.  «.  Ramsay,  mont,   486,  1860  ;  McKay  v.  J&ck- 

45  New  York,  637, 1871.  man,  16  Reporter,  164,  1883. 

1  Elliott  v.  Peirsol,  1  Peters,   340,  4  Potter  v.   Mack,  3  Fisher.  430, 

1828;  Wilcox  v.  Jackson,  13  Peters,  1868;  Rumford  Chemical  Works  v. 

511.  1839  Hecker.  2  Bann.  &  Ard.  388.  1876. 


CHAP.  XXI.]  INJUNCTIONS.  509 

of  the  interlocutory  decree.1  If  there  is  an  exception  to 
this  rule,  it  is  only  where  the  defendant  may  be  enjoined 
from  using  or  selling,  after  the  expiration  of  the  patent,  those 
specimens  of  the  patented  thing  which  he  unlawfully  made 
before  that  expiration.8  But  Justice  MILLER  has  wisely 
decided  that  there  is  no  such  exception  ;  because  such  an 
exception  would  practically  prolong  many  patents  beyond 
the  statutory  term  therefor ;  and  because  damages  are  a 
sufficient  remedy  for  such  unlawful  making.3 

§  699.  A  refusal  of  a  permanent  injunction  will  also 
occur,  where  the  complainant  is  shown  to  have  assigned, 
prior  to  the  interlocutory  decree,  all  his  interest  in  the 
future  duration  of  the  patent  right  infringed  by  the  defend- 
ant.4 But  no  such  refusal  will  be  based  on  the  fact  that 
the  complainant  is  not  employing  his  invention  in  com- 
petition with  the  defendant.6 

§  700.  So,  also,  a  refusal  of  an  injunction  will  be  neces- 
sary, where  the  infringing  defendant  is  dead  at  the  time  of 
the  interlocutory  decree,  even  though  the  suit  may  have 
been  revived  against  his  legal  representative."  In  such  a 
case  no  injunction  will  lie  against  the  dead  defendant,  be- 
cause he  is  no  longer  within  the  jurisdiction  of  the  court ; 
and  none  will  lie  against  the  legal  representative,  because 
he  never  infringed  the  patent.  For  reasons  of  similar  legal 
import,  an  injunction  will  be  refused  where  the  defendant 
is  a  corporation  and  undergoes  legal  dissolution  before  the 
interlocutory  decree.  This  point  of  law  is  based  on  the 


1  Jordan  ».  Dobson,  2  Abbott's  U.  Packing  Co.  v.  Magowan,  27   Fed. 

8.   Reports,    415,   1870;    Signal    v.  Rep.  Ill,  1886. 

Harvey,  18  Blatch.  356,  1880.  8  Westinghouse  v.  Carpenter,  46 

»  Parker  v.  Sears,  1  Fisher,  102,  Off.  Gaz.  244,  1888. 

1850 ;     American    Diamond    Rock  4  Wheeler     v.     McCormick,      11 

Boring  Co.  v.  Sheldon,  1  Fed.  Rep.  Blatch.  845, 1878;  Boomer  v.  Powder 

870,  1880;  American  Diamond  Rock  Press  Co.  18  Blatch.  107,  1875. 

Boring  Co.  v.  Marble  Co.   2  Fed.  s  American  Bell  Telephone  Co.  t>. 

Rep.  353,  355,  356,   1880;   Reay  v.  Cushman   Telephone   Co.   36    Fed. 

Raynor    19   Fed.   Rep.    308,    1884;  Rep.  488,  1888. 

Toledo  Reaper  Co.  v.  Harvester  Co.  •  Draper  v.    Hudson,   1   Holmes, 

24  Fed.  Rep.  739,  1885;  New  York  208,  1878. 


510  INJUNCTIONS.  [CHAP.  xxi. 

doctrine  that  a  court  will  not  direct  a  writ  against  a  dead 
corporation ; ]  and  also  upon  the  rule  that  it  will  not  en- 
join an  act  which,  from  the  nature  of  the  case,  cannot  be 
committed.* 

§  701.  But  the  fact  that  the  defendant  has  ceased  to  in- 
fringe the  patent,  and  says  that  he  will  not  infringe  it  in  the 
future,  is  no  reason  for  refusing  an  injunction  against  him.3 
Whatever  tort  a  man  has  once  committed,  he  is  likely  to 
commit  again,  unless  restrained  from  so  doing. 

§  702.  A  permanent  injunction  will  be  postponed  till  a 
final  decree,  when  such  a  postponement  is  necessary  to  save 
the  defendant  from  special  hardship,  and  is  not  injurious  to 
the  just  rights  of  the  complainant ; 4  or  where  an  immediate 
discontinuance  of  the  defendant's  use  of  the  patented  article 
is  contrary  to  public  policy.5  But  where  such  a  postpone- 
ment is  allowed,  the  defendant  should  be  required  to  give  a 
bond  for  the  security  of  the  complainant.6 

§  703.  A  permanent  injunction  may  be  suspended,  for  an 
extraordinary  cause,  pending  an  appeal  from  a  final  decree 
to  the  Supreme  Court,  at  the  discretion  of  the  judge  who 
decided  the  case  and  allowed  the  appeal,  upon  such  terms 
as  to  bond  or  otherwise  as  he  may  consider  proper  for  the 
security  of  the  rights  of  the  opposite  party.7  Such  a  bond, 
should  be  conditioned  upon  the  result  of  the  appeal,  and 
should  be  separate  from  the  supersedeas  bond  which  is  filed 
when  the  appeal  is  perfected.  The  latter  bond  secures 
nothing  but  the  profits  or  damages  and  costs  which  accrued 
prior  to  the  final  decree,  together  with  the  future  interest 

'Mummafl.  Potomac  Co.  8  Peters,  657,  1849;  Yale  &  Greenleaf  Mfg. 

286,  1834.  Co.  «.  North,  5  Blatch.  462,  1867; 

2  Potter  v.  Crowell,  3  Fisher,  115,  Potter  c.  Mack,  3  Fisher,  428,  1868; 

1866.  Dorsey  Harvester  Rake  Co.  ».  Marsh, 

8  Jenkins  v.  Green wald,  2  Fisher,  6  Fisher,  401,  1873. 

42,  1857;  Potter®  Crowell,  3  Fisher,  5  Ballard  ».    Pittsburg,    12    Fed. 

115, 1866;  Rumford  Chemical  Works  Rep.  783,  1882. 

v.  Vice,   14  Blatch.  180,  1877;  Bui-  6  American  Middlings  Purifier  Co. 

lock  Printing  Press  Co.  v.  Jones,  3  v.  Christian,  3Bann.&Ard.  53, 1877. 

Bann.  &  Ard.  195,  1878.  '  Munson  «.  New  York,  19  Fed. 

4  Barnard  v.   Gibson,  7  Howard,  Rep.  313,1884;  Equity  Rule  93. 


CHAP.  XXI.]  INJUNCTIONS.  511 

on  those  items ;  while  the  other  would  secure  the  profits 
and  damages  to  accrue  after  the  final  decree,  and  before  the 
Supreme  Court  decision.  Where  no  money  recovery  could 
indemnify  the  complainant  for  the  defendant's  unrestrained 
doings  pending  an  appeal  to  the  Supreme  Court,  then  it 
may  be  reasonable  not  to  suspend  the  permanent  injunc- 
tion, because  the  presumption  and  the  probability  are  that 
the  decree  of  the  circuit  court  is  right,  and  because  of  two 
evils  it  is  better  to  incur  the  risk  of  that  which  is  least  to 
be  expected. 

§  704.  A  permanent  injunction  may  be  dissolved  at  any 
time  within  two  years  after  the  expiration  of  the  term  of 
court  at  which  the  final  decree  in  the  case  was  entered ; 
and  such  a  dissolution  will  be  had  where  the  defendant,  by 
means  of  a  supplemental  bill  in  the  nature  of  a  bill  of  re- 
view, or  by  a  bill  of  review,  secures  a  cancellation  of  that 
decree.1  And  such  a  dissolution  must  of  course  occur 
whenever  the  final  decree  in  the  case  is  reversed  by  the 
Supreme  Court. 

§  705.  Injunctions  to  restrain  infringements  of  patents 
may  be  granted  independent  of  all  other  relief ;  *  but  no  in- 
junction will  be  issued  on  account  of  an  infringement  which 
is  so  trivial  in  amount  as  to  be  below  the  dignity  of  the 
court ;  *  nor  to  restrain  a  junior  patentee  from  bringing  ac- 
tions on  his  patent  while  that  patent  is  still  free  from  an 
adjudication  of  invalidity;*  nor  to  restrain  a  complainant 
from  bringing  actions  against  persons  who  are  using  or  sell- 
ing those  articles,  for  the  making  of  which,  the  action  at 
bar  was  brought  against  the  defendant.  This  last  point 
has  been  decided,  or  stated,  the  other  way  by  several 
judges,'  but  neither  of  them  showed  what  authority  they 


1  Sections  647  to  653  of  this  book.  •  Rumford    Chemical   Works   «. 

*  American  Cotton-Tie  Supply  Co.  Hecker,  11  Blatch.  556,  1874. 

v.  McCready,  17  Blatch.  291,  1879.  •  Birdsall  t>.  Mfg.  Co.  1  Hughes, 

» Lowell    Mfg.    Co.   v.   Hartford  64,  1877 ;  Allis  9.  Stowell,  16  Fed. 

Carpet  Co.  2  Fisher,  472,  1864.  Rep.  788,  1883  ;  Ide  t>.  Engine  Co. 

4  Asbestos  Felting  Co.  «.  Salaman-  81  Fed.  Rep.  901,  1887. 
der  Felting  Co.  13  Blatch.  453, 1876. 


512  INJUNCTIONS.  [CHAP.  xxi. 

had  to  issue  an  injunction  against  a  person  without  any  bill 
being  filed  against  him  as  a  foundation  therefor.  Courts 
have  jurisdiction  in  patent  cases  to  issue  injunctions  only  in 
accordance  with  the  course  and  principles  pf  courts  of 
equity ; '  and  it  is  not  generally  understood  that  those  prin- 
ciples allow  a  chancellor  from  whom  a  citizen  prays  an  in- 
junction against  A.  B.  to  respond  by  enjoining  the  com- 
plainant not  to  sue  C.  D.  The  text  writer  cannot  see  how 
Justice  BLATCHFORD'S  very  cogent  argument  against  that 
notion,  can  be  logically  met  by  the  judges  who  have  favored 
that  view.  But  an  injunction  may  issue  to  restrain  the 
complainant  from  bringing  an  action  at  law  against  the  de- 
fendant for  the  same  infringements  as  any  of  those  covered 
by  the  action  in  equity.8 

§  706.  The  duration  of  injunctions  in  patent  cases  depends 
upon  a  variety  of  circumstances.  Unless  such  a  writ  is  ex- 
pressly made  to  apply  to  the  use  or  sale,  after  the  expira- 
tion of  the  patent,  of  specimens  of  the  patented  thing  which 
were  made  before  that  time,  such  injunction  cannot  continue 
after  that  expiration;  and  surely  no  such  writ  will  be  made 
to  apply  to  such  use  or  sale  of  unpatented  parts  of  an  in- 
fringing combination.3  Indeed  no  injunction  ought  in  any 
case  to  continue  after  the  expiration  of  the  patent.4  Per- 
manent injunctions  are  sometimes  called  perpetual  injunc- 
tions, but  in  patent  cases  that  would  be  a  misnomer,  for  no 
injunction  can  stand  longer  than  the  right  upon  which  it  is 
based,  and  patent  rights  are  never  perpetual. 

§  707.  And  the  duration  of  an  injunction  sometimes  de- 
pends upon  whether  it  was  issued  by  a  circuit  court  in  term 
time,  or  by  one  of  the  judges  in  vacation.  The  statutes 
draw  a  plain  distinction  between  a  circuit  court  and  a  judge 
thereof.  When  a  circuit  court  is  in  session  during  one  of 
its  terms,  its  jurisdiction  is  the  same  whether  it  is  held  by 


1  Revised  Statutes,  Section  4921.  Rep.  147,  1888. 

s  Morss  v.  Knapp,  35  Fed.  Rep.  4  Westiughouse  v.  Carpenter,  46 

218,  1888.  Off.  Gaz.  244,  1888. 
3  Johnson  v.  Railroad  Co.  87  Fed. 


CHAP.  XXI.]  INJUNCTIONS.  513 

the  circuit  justice  allotted  to  the  circuit,  or  by  the  circuit 
judge  of  the  circuit,  or  by  the  district  judge  of  the  district, 
or  by  any  two  or  more  of  them  sitting  together,  or  by  the 
circuit  judge  of  some  other  circuit,  or  by  the  district  judge 
of  some  other  district,  holding  the  court  in  a  special  emerg- 
ency.1 As  to  the  duration  of  injunctions  issued  by  circuit 
courts  so  held,  the  rules  stated  in  the  last  section  uniformly 
apply.  But  it  often  happens  that  injunctions  become  neces- 
sary during  the  time  which  elapses  after  the  adjournment 
of  one  term  of  the  circuit  court  in  a  particular  district,  and 
before  the  beginning  of  the  next  term  of  the  same  court. 
In  such  a  case,  an  injunction  may  be  granted  by  the  circuit 
justice  allotted  to  that  circuit,  or  by  the  circuit  judge  of 
that  circuit,  or  by  the  district  judge  of  that  district,  under 
the  following  circumstances  respectively,  and  with  the  re- 
spective durations  about  to  be  mentioned.  The  circuit  jus- 
tice or  the  circuit  judge  may  sit  at  any  time  at  any  place 
within  his  circuit,  to  grant  an  injunction  in  any  proper  case 
pending  in  the  circuit  court  of  any  district  in  that  circuit ; 
and  the  circuit  justice  may  so  sit,  at  any  other  place  in  the 
United  States,  whenever  the  motion  cannot  be  heard  by  the 
circuit  judge  of  the  circuit,  or  by  the  district  judge  of  the 
district,  whether  the  inability  of  the  local  judges  arose  from 
absence  from  their  respectiA'e  jurisdictions,  or  from  any 
other  cause ;"  and  an  injunction,  when  so  granted,  will  have 
the  same  duration  as  if  granted  by  the  circuit  court  for  the 
district.'  The  district  judge  of  any  district  may  sit  at  auy 
time,  at  any  place  within  his  district,  to  grant  an  injunction 
in  any  proper  case  pending  in  the  circuit  court  of  that  dis- 
trict, provided  the  mover  did  not  have  a  reasonable  time  to 
apply  to  the  circuit  court  for  the  writ ;  but  such  an  injunc- 
tion will  not  continue  in  force  after  the  beginning  of  the 
next  term  of  the  circuit  court  unless  the  court,  when  it  sits, 

.    '  Revised  Statutes,  Sections  609,  s  Revised  Statutes,   Section  719 ; 

617,  618,  591,  592,  593,  594,  595.  596,  Searls  t>.  Railroad  Co.  2  Woods,  622, 

and  611;  Goodyear  Dental  Vulcanite  1873. 

Co.  v.  Folsom,  5  Bann.  &  Ard.  591,  3  Gray  c.   Railroad  Co.  1  Wool- 

1880.  worth,  68,  1864. 


514  INJUNCTIONS.  [CHAP.  xxi. 

makes  an  order  to  that  effect.1  If  the  next  term  of  the  cir- 
cuit court  is  held  by  some  other  judge  than  the  district 
judge  who  granted  the  injunction,  the  approval  of  the  in- 
junction, by  the  judge  so  holding  court,  will  therefore  be 
necessary  to  its  continued  vitality;  but  if  the  next  term 
happens  to  be  held  by  the  district  judge  who  issued  the 
writ,  his  order  continuing  it  in  force  will  be  equally  effica- 
cious. In  either  event,  orders  to  continue  injunctions  is- 
sued by  district  judges  in  vacation,  have  become  so  much  a 
matter  of  form,  that  they  are  seldom  actually  asked  for  or 
entered.  But  the  formality  ought  to  be  revived  and  fol- 
lowed, because  in  its  absence  no  attachment  can  lie  against 
one  who  disregards  such  an  injunction  after  the  beginning 
of  the  ensuing  term  of  the  circuit  court.2  Indeed  it  is  prob- 
able that  many  a  defendant  supposes  himself  at  this  moment 
to  be  under  a  valid  injunction  not  to  infringe  a  particular 
patent,  when  in  fact  that  injunction  long  ago  expired  be- 
cause it  was  granted  by  a  district  judge  in  vacation,  and 
was  never  ordered  to  continue  in  force  by  the  circuit  court 
in  term  time. 

§  708.  An  attachment  will  issue  to  bring  an  enjoined  de- 
fendant before  the  court  for  punishment,3  whenever  the 
complainant  institutes  proper  proceedings  therefor,  and 
proves  that  the  defendant  was  promptly 4  served  with  a  writ 
of  injunction,  and  that  the  writ  contained  a  concise  descrip- 
tion of  the  particular  thing,  all  specimens  of  which  it  forbade 
the  defendant  to  make,  use,  or  sell,5  and  that  the  defendant 
did  make,  or  use,  or  sell,  or  did  cause  to  be  made,  used, 
or  sold  a  specimen  of  that  thing,  or  of  a  thing  clearly  the 
same,  after  having  been  served  with  that  writ.6  But  an  at- 

1  Revised  Statutes,  Section  719.          Blatch.  191,  1875 ;  Bate  Refrigerat- 

2  Parker  v.  The  Judges,  12  Whea-      ing  Co.  v.  Gillett,  24  Fed.  Rep.  696, 
ton,  564,  1827;  Gray  v.  Railroad  Co.      1885. 

1  Woolworth,  63,  1864.  « Birdsall  v.  Mfg.  Co.  2  Bann.  & 

3  Bate  Refrigerating  Co.  v.  Gillett,  Ard.  519,  1877  ;  Allis  v.  Stow  ell,  19. 
30  Fed.  Rep.  684,  1887.  Off.  Gaz.  727,  1881 ;  Atlantic  Giant 

4  McCormick  v.  Jerome,  3  Blatch.  Powder  Co.  v.  Dittmar  Powder  Mfg. 
486,  1856.  Co.  9  Fed.  Rep.  316,  1881 ;  Mundy 

5  Wuipple     v.      Hutchinson,     4  v,  Mfg.  Co.  34  Fed.  Rep.  541,  1888, 


CHAP.  XXI.]  INJUNCTIONS.  515 

tachment  will  not  issue  against  a  stranger  to  the  suit,  merely 
because  he  has  succeeded  to  the  business  in  the  conduct  of 
which  the  defendant  incidentally  infringed  the  complainant's 
patent,  even  where  that  successor  has  likewise  infringed.1 
Where  the  defendant  is  a  corporation,  and  where  the  officer 
of  that  corporation  upon  whom  the  writ  was  served,  was 
privy  to  its  violation,  an  attachment  will  issue  against  him 
in  person ;  *  and  indeed  an  injunction  duly  served  on  a  cor- 
poration is  binding  on  all  persons  acting  for  that  corpora- 
tion, and  who  have  notice  of  the  writ  and  of  its  contents, 
whether  they  were  actually  served  or  not.8  Where  the 
thing  proved  to  have  been  made,  used,  or  sold  by  the  en- 
joined defendant  differs  from  the  article  described  in  the 
writ  of  injunction,  a  question  of  infringement  arises,  which 
ought  to  be  brought  before  the  court  on  a  motion  for  an- 
other and  a  specific  writ  of  injunction  rather  than  on  a  mo- 
tion for  an  attachment.4  If  that  question  is  a  doubtful  one, 
an  attachment,  if  moved  for,  will  not  issue ; &  because  doubt- 
ful questions  will  not  be  decided  on  summary  proceedings 
to  commit  persons  for  contempt  of  court.  But  not  every 
question  is  doubtful  which  is  difficult,  or  which  is  complex, 
or  about  which  the  evidence  is  conflicting.  It  is  therefore 
the  duty  of  the  court,  on  a  hearing  of  a  motion  for  an  at- 
tachment, to  examine  what  the  defendant  is  proved  to  have 
done,  and  to  issue  an  attachment  if  his  doings  satisfactorily 
appear  in  the  eye  of  the  law  to  constitute  infringement  of  a 
claim  covered  by  the  writ  of  injunction.' 

1  Bate  Refrigerating  Co.  t>.  Gillett,  465, 1876  ;  Onderdonk  v.  Fanning,  5 

30  Fed.  Rep.  684,  1887.  Bann.  &  Ard.  431,  1880;  Bate  Re- 

s  Wetherill  v.  Zinc  Co.  1  Bann.  &  frigerating  Co.  v.  Eastman,  11  Fed. 

Ard.  150,  1874.  Rep.  902,  1881 ;  Higby  t>.  Rubber 

3  Phillips  t>.  Detroit,  3  Bann.  &  Co.  18  Fed.  Rep.  601,  1883 ;  Smith 
Ard.  150,  1877.  «.  Halkyard,  19  Fed.  Rep.  602. 1884; 

4  Gold  &  Stock  Telegraph  Co.  t>.  Wirt  v.  Brown,  30  Fed.  Rep.  187, 
Pearce,  19  Fed.  Rep.  419,  1884.  1887 :    Temple  Pump  Co.  «.  Mfg. 

4  California  Paving  Co.  t>.  Molitor,  Co.  81  Fed.  Rep.  292.  1887;  Howard 

113  U.  S.  617,  1884  ;  Liddle  t>.  Cory,  t>.   Mast,  88  Fed.  Rep.  867,  1888  ; 

7  Blatch.  1,  1866 ;  Welling  v.  Trim-  Mundy  v.  Mfg.  Co.  84  Fed.  Rep. 

ming  Co.  2  Bann.  &  Ard,  1,  1875;  541,  1888. 

Buerk  v.  Imhaeuser,  2  Bann.  &  Ard.  •  Wetherill  t>.  Zinc  Co.  1  Bann.  & 


516  INJUNCTIONS.  [CHAP.  xxi. 

§  709.  It  is  no  defence  to  a  motion  for  an  attachment  to 
show  that  the  decision  in  pursuance  of  which  the  injunction 
was  granted  was  wrong ; '  or  that  new  evidence  has  since 
been  discovered  which,  if  it  had  been  known  at  the  hearing, 
would  have  caused  a  contrary  decision ; 2  or  that  the  de- 
fendant was  advised  by  counsel  that  his  doings  did  not  vio- 
late the  injunction ; 3  or  that  what  the  defendant  did  was 
done  as  the  employe  of  another  ; 4  or  that  the  writ  of  injunc- 
tion was  for  a  while  suspended  in  its  operation  by  the  con- 
sent of  the  complainant  without  any  order  of  court ;  *  or  that 
the  writ  of  injunction  was  inadvertently  made  broader  than 
the  decision  of  the  court  would  warrant.6  In  such  a  case  as 
the  last  of  these,  the  defendant  may  apply  to  the  court  to 
correct  the  writ,  but  he  must  not  disobey  it  while  it  remains 
unchanged.  But  where  an  injunction  was  based  on  a  con- 
sent decree,  which  .decree  was  entered  in  pursuance  of  a 
compromise  of  the  parties,  an  attachment  will  not  issue  for 
a  disregard  of  that  injunction,  if  that  compromise  has  been 
set  aside  by  a  court  of  competent  jurisdiction,  or  if  such  a 
court  has  enjoined  the  complainant  from  enforcing  the  con- 
tract of  compromise.7 

§  710.  The  penalty  for  a  violation  of  an  injunction  de- 
pends upon  the  circumstances  of  the  particular  case  at  bar. 
Where  it  appears  that  the  defendant  had  no  intention  to 
disobey  the  writ,  the  penalty  may  be  confined  to  an  en- 
forced payment  of  the  costs  of  the  motion  for  an  attach- 


Ard.  105,  1874  ;  Schillinger  v.  Gun-  4  Sickles  ®.  Borden,  4  Blatch.  15, 

ther,  2  Bann.   &  Ard.   545,   1877  ;  1857  ;  Goodyear  v.  Mullee,  5  Blatch. 

Morss  v.  Knapp,  87  Fed.  Rep.  353,  437,  1867  ;  Potter  v.  Muller,  1  Bond, 

1889.  601,   1865 ;    Iowa  Barb  Steel  Wire 

1  Woodworth  v.  Rogers,  3  Wood-  Co.    v.  Barbed  Wire  Co.   30  Fed. 

bury  &  Minot,  135,  1847  ;   Liddle  «.  Rep.  123,  1887. 

Cory,  7  Blatch.  1,  1865.  6  Pentlarge    v.  Beeston,    1    Feu. 

*  Whipple     v.     Hutchinson,     4  Rep.  862,  1880. 

Blatch.  190,  1858;  Phillips  v.  De-  6  Sickles  v.  Borden,  4  Blatch.  15, 

troit,  3  Bann.  &  Ard.  150,  1877.  1857. 

3  Hamilton  v.  Simons,  5  Bissell,  *  Pentlarge   «.   Beeslon,    1    Fed. 

77,  1869.  Rep.  862,  1880. 


CHAP.  XXI.]  INJUNCTIONS.  517 

ment.1  "Where  the  disobedience  is  less  excusable,  the  de- 
fendant may  be  compelled  to  pay  all  the  expenses  and 
counsel  fees  incurred  by  the  complainant  in  relation  to  the 
motion.3  Where  the  particular  defendant  in  contempt  de- 
rived no  benefit  from  his  disobedience,  the  penalty  should 
not  extend  to  a  decree  for  the  damages  which  the  com- 
plainant incurred  on  account  of  the  violation.*  Where  such 
a  decree  is  entered,  it  will  not  justify  a  permanent  imprison- 
ment of  the  defendant,  on  account  of  his  inability  and  con- 
sequent failure  to  pay  its  amount ; 4  and  such  a  decree  may 
be  reviewed  and  reversed  in  the  Supreme  Court.5  But 
where  disobedience  of  an  injunction  is  excuseless  and  de- 
fiant, the  penalty  may  be  a  reasonable  fine  and  a  reasonable 
imprisonment. 

1  Carsteadtfl.  Corset  Co.  13  Blatch.  'Phillips  t>.  Detroit,  3  Bann.  & 

371,  1876;  Strobridge  v.  Lindsay,  6  Ard.  155,  1877. 

Fed.  Rep.  510,  1881.  *  Hendryx  t>.  Fitzpatrick,  19  Fed. 

*  Doubleday  *.  Sherman,  4  Fisher,  Rep.  810,  1884. 

253,  1870 ;  Schillinger  t>.  Gunther,  2  k  Worden  9.  Searls,  121  U.  S.  24, 

Bann.  &  Ard.  545,  1877.  1886. 


CHAPTER  XXII. 


PROFITS. 


711.  The  inf ringer's  profits  recover- 
able in  equity. 

712.  In  cases  of  joint  infringement. 

713.  In  cases  of  infringement  partly 
unprofitable. 

714.  What  spaces  of  time  an  account 
of  profits  may  cover. 

715.  The  generic  rule  for  ascertain- 
ing infringer's  profits. 

716.  Complainant's  damages  no  cri- 
terion of  defendant's  profits. 

717.  Defendant's  profits  in  cases  of 
unlawfully  making  and  selling 
articles   covered    by  the   com- 
plainant's patent. 

718.  Method  of  ascertaining  cost  of 
making  and  selling  infringing 
articles. 

719.  Burden  of  proof  when  it    is 
necessar}'  to  separate  profits  due 
to  patented  features,  from  prof- 
its due  to  other  features,  of  an 
infringing  article. 

720.  Method  of  making  the  separa- 
tion where  defendant  made  and 
sold    the    patented    invention 
separately,  as  well  as  in  connec- 
tion with  other  things. 

721.  Method  where  defendant  pays 
royalty  for  right  to  make  and 
sell  the  features  not  covered  by 
the  patent  in  suit. 

722.  Cases  where  no  separation  is 
required  or  allowed. 

723.  Method  of  making  the  separa- 
tion by  the  criterion  of  compar- 
ative cost. 


724.  Defendant's  profits  in  cases  of 
unlawfully  selling  articles  partly 
or  wholly  covered  by  complain- 
ant's patent. 

725.  Defendant's  profits  in  cases  of 
unlawful    using    of    patented 
processes  or  things,  ascertained 
by  the  rule  in  Mowry  v.  Whit- 
ney. 

726.  Standards    of    comparison    in 
respect  of  being  open    to   the 
public. 

727.  In  respect  of  being  adequate  to 
accomplish  an  equally  beneficial 
result. 

728.  Recoverable  profits  may  result 
from  affirmative  gains,  or  from 
saving  from  loss. 

729.  Affirmative  gain. 

730.  Saving  from  loss. 

731.  Affirmative    gain    and    saving 
from  loss. 

732.  Standards  of  comparison  need 
not  have  been  used  by  the  in- 
fringer. 

733.  A  standard  of  comparison  must 
have  been  known  at  the  time  of 
the  infringement,  but  need  not 
have  been  in  existence  at  any 
earlier  period. 

734.  Method  of  selecting  the  proper 
standard  of  comparison. 

735.  The  rule  in  Mowry  v.  Whitney 
has  no  application  to  cases  of 
infringement  by  making  or  by 
selling. 

518 


CHAP.  XXII.] 


PROFITS. 


519 


736.  Questions  of   interest   on   in- 
fringers'  profits,  considered  in 
the    light   of    Supreme    Court 
precedents. 

737.  Considered  in  the  light  of  Cir- 
cuit Court  precedents. 

738.  Considered    in    the    light    of 
equitable  doctrines  and  princi- 
ples. 

739.  Proceedings  before  masters. 

740.  Evidence  before  masters. 

741.  Objections  to  evidence  before 
masters. 

742.  Questions  of  the  extent  of  the 
defendant's  infringement. 


743.  Questions  relevant  to  different 
sorts  of  defendant's  alleged  in- 
fringement. 

744.  Master's  reports. 

745.  Exceptions  to  master's  report. 

746.  Defendant's      exceptions      to 
master's  reports. 

747.  Defendant's  affirmative  excep- 
tions to  master's  reports. 

748.  Defendant's    negative    excep' 
tions  to  master's  reports. 

749.  Complainant's     exceptions    to 
master's  reports. 

750.  Outline  of  practice  relevant  to 
master's  findings. 


§  711.  THE  profits  which  are  recoverable  in  equity  for 
the  infringement  of  a  patent,  are  those  which  the  defendant 
made  from  that  infringemenf.1  They  are  the  profits  which 
he  actually  made ;  not  those  which  with  reasonable  dili- 
gence or  different  management  he  might  have  made.1 
Where  a  particular  infringer  realized  no  profit  from  his  in- 
fringement none  can  be  recovered  from  him ;  but  where  he 
did  make  such  a  profit,  it  can  be  recovered,  whether  the 
general  business,  of  which  the  infringement  formed  a  part, 
was  profitable  to  him  or  not.1  The  recoverable  profits  are 
those  which  resulted  directly,  and  do  not  include  any  which 
resulted  indirectly,  from  the  infringement.4  The  case  just 
cited  is  an  excellent  example  of  this  distinction.  The  differ- 
ence between  the  amount  of  money  for  which  the  defend- 
ants sold  their  preserved  fish,  and  the  aggregate  cost  of 
that  fish  and  of  preserving  it  by  the  patented  apparatus, 
was  there  held  to  be  direct  profit.  But  it  appeared  that 
the  defendants  were  also  dealers  in  fresh  fish,  and  that  they 
sold  a  large  amount  of  such  fish  at  higher  prices  than  they 


1  Rubber  Co.  v.  Goodyear,  9  Wal- 
lace, 80t,  1869  ;  Tilghman  v.  Proc- 
tor, 125  U.  8.  144,  1888. 

1  Livingston  v.  Wood  worth,  15 
Howard,  546,  1853;  Dean  «.  Mason, 
20  Howard,  203,  1857  ;  Munson  t>. 


New  York,  16  Fed.  Rep.  560,  1883. 

*  Elizabeth  «.  Pavement  Co.  97 
U.  S.  138,  1877;  Tilghraan  «.  Proc- 
tor, 125  U.  S.  146.  1888. 

4  Piper  v.  Brown,  1  Holmes,  198, 
1873. 


520  PROFITS.  [CHAP.  xxn. 

could  have  done,  had  they  not  reduced  the  supply  in  the 
market  by  means  of  preserving  fish  in  the  patented  appara- 
tus. The  increase  in  the  price  of  fresh  fish,  which  was  thus 
caused  by  the  defendants'  infringement,  was  one  and  one 
half  cents  per  pound ;  and  the  consequent  profits  made  by 
the  defendants  amounted  to  more  than  six  thousand  dol- 
lars. But  the  court  held  that  those  profits  could  not  be 
recovered  by  the  patentee,  because  they  did  not  directly 
result  from  the  infringement  of  his  patent. 

§  712.  Where  several  defendants  were  joint  inf ringers  of  a 
patent,  but  where  all  the  resulting  profits  were  received  by 
part  of  the  wrong-doers,  the  decree  for  profits  will  be  ren- 
dered only  against  those  defendants  who  realized  them.1 
Where  all  of  the  defendants  realized  profits  during  a  portion 
of  the  time  covered  by  the  infringement  in  suit,  and  where 
a  part  of  them  realized  profits  during  the  residue  of  that 
time,  the  respective  profits  may  be  recovered  accordingly, 
and  a  decree  be  entered  against  all  of  the  defendants  for 
the  profits  in  which  all  participated,  and  against  a  part  of 
the  defendants  for  the  profits  which  that  part  alone  rea- 
lized.4 

§  713.  Where  a  part  of  the  infringement  of  a  defendant 
resulted  in  profits,  and  the  residue  resulted  in  losses,  the 
complainant  is  entitled  to  recover  those  profits  without  any 
deduction  on  account  of  those  losses.3  Each  infringement 
is  treated  by  itself.  If  it  resulted  in  profit,  that  profit  be- 
longs to  the  patentee.  If  it  resulted  in  loss,  that  loss  must 
be  borne  by  the  infringer.  It  cannot  be  set  off  against  the 
patentee's  right  of  action  for  the  profitable  infringement, 
any  more  than  it  could  be  made  the  basis  of  a  right  of 
action  against  the  patentee  if  no  infringement  had  been 
profitable. 


1  Elizabeth  v.  Pavement  Co.  97  U.  3  Callaghan  v.  Myers,  128  U.  S. 
S.  140,  1877.  664,    1888 ;    Graham    v.   Mason,    1 

2  Tatham  v.  Lowber,  4  Blatch.  87,  Holmes,  90, 1872;  Steam  Stone  Cut- 
1857 ;  Herring  v.  Gage,  3  Bann.  &  ter  Co.  v.  Mfg.  Co.   17  Blatch.  27, 
Ard.  402,  1878.  1879. 


CHAP.  XXII.]  PROFITS.  521 

§  714.  An  account  of  profits  cannot  be  had  where  none 
arose  before  the  action  was  begun,'  but  such  an  account  is 
not  confined  to  those  profits,  nor  indeed  to  those  which  ac- 
crued before  the  interlocutory  decree  was  entered ;  but  may 
be  made  to  include  all  profits  realized  by  the  defendant 
from  infringing  the  complainant's  right,  at  any  time  prior 
,  to  the  closing  of  the  account.1 

§  715.  The  generic  rule  for  ascertaining  the  amount  of 
the  profits  recoverable  in  equity  for  the  infringement  of  a 
patent,  is  that  of  treating  the  infringer  as  though  he  were  a 
trustee  for  the  patentee  in  respect  of  the  profits  which  he 
realized  from  his  infringement.*  The  specific  rules  by 
means  of  which  this  generic  rule  is  administered,  are  some- 
what numerous  and  somewhat  elastic.  They  are  adapted 
to  the  varying  natures  of  patented  inventions  and  to  the 
varying  circumstances  under  which  the  patents  for  those 
inventions  are  respectively  infringed.4  They  all  require  the 
best  evidence,  of  which  the  nature  of  each  particular  case, 
to  which  they  may  be  respectively  applied,  will  reasonably 
admit ; 5  and  that  evidence  must  be  reasonably  convincing." 

§  716.  The  patentee's  royalty  is  no  measure  of  the  defend- 
ant's profits,'  even  in  a  case  where  the  patentee  habitually 
exercised  his  exclusive  right  by  granting  licenses  to  others.9 
Nor  are  any  other  facts  which  relate  to  the  measure  of  the 
complainant's  damages,  material  to  inquiries  touching  the 
amount  of  the  defendant's  profits.9 

§  717.  The  difference  between  the  amount  it  cost  the  de- 


1  Marsh  ».  Nichols,  128  U.  S.  616,  *  Herring  ».  Gage,  3  Bann.  &  Ard. 

1888.  399,  1878;  Emigh  v.  Railroad  Co.  6 

9  Rubber  Co.  ».  Goodyear,  9  Wai-  Fed.  Rep.  283,  1881. 

lace,  800,   1869;  Knox  v.  Quicksil-  •  Locomotive  Safety  Truck  Co.  «. 

ver  Mining  Co.  6  Sawyer,  435,  1878;  Railroad  Co.  2  Fed.  Rep.  681,  1880. 

Creamer  t>.  Bowers,  85  Fed.  Rep.  '  Knox  v.  Quicksilver  Mining  Co. 

209,  1888.  6  Sawyer,  430,  1878. 

3  Root  v.  Railway  Co.   105  U.  8.  8  Tilghman  v.  Proctor,  125  U.  8. 
214,  1881;  Tilghman  v.  Proctor,  125  148,   1888;  Wooster  v.   Taylor,  14 
U.  8.  148,  1888.  Blatch.  403,  1878. 

4  Wetherill  v.  Zinc  Co.  1  Bann.  &  •  •  Elizabeth  t>.  Pavement  Co.  97  U. 
Ard.  486,  1874.  8.  143. 1877. 


522  PROFITS.  [CHAP.  xxn. 

fendant  to  make  and  sell  his  specimens  of  the  patented 
thing,  and  the  amount  which  he  received  for  those  speci- 
mens, is  in  many  cases  the  amount  of  his  profits.1  That  is 
the  fact  where  the  only  infringement  consisted  of  such 
making  and  selling,  and  where  no  element  of  particular 
proved  value,  other  than  those  covered  by  the  patent  in 
suit,  entered  into  the  composition  of  the  specimens  which 
were  made  and  sold.2  In  the  first  case  just  cited,  it  appears 
that  the  patent  did  not  cove"r  all  the  elements  of  the  articles 
of  merchandise  which  were  made  and  sold  by  the  defend- 
ant. But  those  unpatented  elements  were  disregarded  in 
that  case,  because  the  conduct  of  the  defendant  had  ren- 
dered impossible  a  separate  account  of  the  profits  due  to 
the  patented  and  those  due  to  the  unpatented  features  of 
those  articles.  In  the  second  of  the  cited  cases,  it  appeared 
that  the  pavement  which  was  made  by  the  New  Jersey 
Wood  Paving  Co.  for  the  city  of  Elizabeth,  contained  the 
entire  invention  of  the  complainant,  and  contained  an  addi- 
tion thereto,  which  addition  might  or  might  not  have  con- 
tributed to  the  profit  which  resulted  to  the  Paving  Co. 
from  its  contract.  Under  those  circumstances,  the  Supreme 
Court  held  that  the  entire  profit  should  go  to  the  patentee, 
because  the  defendant  did  not  prove  how  much  was  due  to- 
the  additional  element.  The  principle  of  both  these  prece- 
dents on  this  point  appears  to  be  that  where  a  defendant 
mingled  profits  which  he  made  as  an  infringer,  with  those 
he  made  otherwise,  he  must  furnish  the  evidence  by  means 
of  which  they  can  be  separated,  or  must  submit  to  the  re- 
covery of  the  whole.  In  the  third  case,  the  right  which 
was  infringed  was  an  exclusive  right  to  make  and  sell 
Woodworth  planing-machines.  The  defendant  unlawfully 
made  and  sold  such  machines,  but  used  none,  and  he  was 
held  liable  for  the  manufacturer's  profit :  that  is  to  say,  for 


1  Simpson  «.  Davis,  22  Fed.  Rep.  lace,  803,  1869;  Elizabeth  v.  Pave- 
444,  1884;  Shannon  ®.  Bruner,  38  ment  Co.  97  U.  S.  141,  1877 ;  Jen- 
Fed.  Rep.  872,  1888.  kins  v.  Greenwald,  1  Bond,  141, 

3  Rubber  Co.  v.  Goodyear,  9  Wai-  1857. 


CHAP.  XXII.]  PROFITS.  523 

the  amount  for  which  he  sold  the  machines,  minus  what  it 
cost  him  to  make  them. 

§  718.  When  taking  an  account  of  profits  in  the  method 
indicated  in  the  last  section,  it  is  generally  easy  to  ascertain 
the  amount  which  the  defendant  realized  for  the  articles 
which  he  majie  and  sold ;  but  it  is  generally  difficult  to  de- 
termine how  much  it  cost  him  to  make  and  sell  them.  One 
such  inquiry  occupied  ex-Chancellor  WALWOBTH  as  master, 
more  than  ten  years,  and  occupied  the  judge  who  passed 
upon  the  exceptions  to  his  report,  at  least  as  many  weeks.1 
When  such  accounts  are  taken,  the  elements  which  are 
allowed  to  enter  into  that  cost  are  the  following : 

1.  The  market  value  of  materials  on  hand  at  the  time  the 
infringement  began,  and  the  actual  cost  of  materials  subse- 
quently purchased,  but  not  the  market  value  of  the  latter 
at  the  time  they  were  used  in  infringing.1 

2.  Money  paid  in  good  faith  to  employes  engaged  in  mak- 
ing and  selling  the  infringing  articles,  even  where  those 
employes  were  officers  or  stockholders  of  the  infringing 
corporation.* 

3.  Proper  remuneration  for  the  labor  of  the  infringer  in 
conducting  the  infringement.     This  element  has  been  disal- 
lowed in  one  case ; 4  but  the  same  reasoning  which  justified 
the  Supreme  Court  in  allowing  the  members  of  a  defendant 
corporation  for  their  personal  services,  calls  for  the  same 
allowance  where  the  men  who  infringe  do  so  as  partners  or 
as  individuals.    Where  a  number  of  men  form  a  corporation 
and,  as  such,  infringe  a  patent  by  making  and  selling  speci- 
mens of  a  patented  thing,  the  Supreme  Court  approves  a 
proper  allowance  for  their  labor  being  made  an  element  in 
the  cost  of  those  specimens,  when  those  men  are  forced  to 
pay  over  those  profits  to  the  patentee.     There  is  the  same 

1  Troy  Iron  &   Nail  Factory  v.  son  Pavement  Co.  v.  Elizabeth,  1 
Corning.  6  Blatcli.  328,1869.  Bann.   &  Ard.   442,   1874  ;    Steam 

2  Rubber  Co.  t>.  Goodyear.  9  Wai-  Stone  Cutter  Co.  v.  Mfg.  Co.   17 
lace,  803.  1869.  Blatch.  29.  1879. 

*  Rubber  Co.  v.  Goodyear,  9  Wai-  4  Williams  «.  Leonard,  9  Blatch. 
lace,  803,  1809 ;  American  Nichol-  476.  1872. 


524  PROFITS.  [CHAP,  xxn, 

reason  for  making  the  same  allowance,  where  two  such  men 
make  and  sell  such  specimens  as  partners,  or  where  one 
man  does  so  alone.  But  it  is  the  labor  of  the  infringer  in 
making  or  selling  infringing  articles,  or  in  performing  an 
infringing  process,  that  is  contemplated  in  this  paragraph. 
Salaries  which  are  received  by  partners  in  the  place  of  part- 
nership profits,  or  which  are  paid  for  a  general  oversight  of 
partnership  business  do  not  come  in  this  category.1 

4.  Interest  on  borrowed  money,  but  not  interest  on  capital 
stock. "  The  same  reasons  which  deny  an  allowance  of  in- 
terest on  the  capital  stock  of  an  infringing  corporation,  will 
deny  an  allowance  of  interest  on  the  capital  of  an  individual 
which  is  invested  in  a  factory,  and  is  used  as  a  means  of 
unlawfully  making  specimens  of  a  patented  article.  It 
would  follow  from  Rubber  Co.  v.  Goodyear  that  the  two 
decisions  which  have  been  made  on  the  circuit  allowing 
such  items,  either  in  the  form  of  interest  on  capital,3  or 
in  the  form  of  rent  of  shop  and  fixtures,4  were  wrong  in 
principle.  But  it  must  be  admitted  that  the  reasoning  of 
these  circuit  court  decisions  is  more  convincing,  on  this 
point,  than  that  of  the  Supreme  Court  case  ;  and  that  the 
latter  decision  seems  hardly  consistent  with  itself,  for  it  is 
difficult  and  perhaps  impossible  to  see  why  interest  should 
be  allowed  on  borrowed  capital,  and  not  allowed  on  capital 
owned  by  the  infringer.  Indeed  the  principle  of  the  case 
of  Rubber  Co.  v.  Goodyear,  on  this  point,  seems  to  have 
been  overruled  by  the  Supreme  Court  in  the  case  of  Manu- 
facturing Co.  v.  Cowing.5  In  that  case  the  court  criticised 
and  modified  a  master's  report  because  it  did  not  allow  for 
the  use  of  tools,  machinery,  power,  and  other  facilities  em- 
ployed in  the  manufacture  of  the  infringing  articles.  Now 
those  agencies  were  but  the  tangible  things  in  which  the 


1  Callaghan  «.  Myers,  128  U.  S.  Corning,  6  Blatch.  354.  1869. 

663,  1888.  *  Steam  Stone  Cutter  Co.  t>.  Mfg. 

2  Rubber  Co.  e.  Goodyear,  9  Wai-  Co.  17  Blatch.  28,  1879. 

lace,  804,  1869.  s  Manufacturing  Co.  v.  Cowing, 

3  Troy  Iron  &  Nail    Factory  «.  105  U.  S.  257,  1881. 


CHAP.  XXII.]  PROFITS.  525 

capital  of  the  defendant  corporation  was  invested,  and  to 
allow  for  their  use  was  really  to  allow  interest  or  its  equiv- 
alent, on  that  capital. 

5.  Expenses  of  selling,  including  advertising.1 
§  719.  Where  the  thing  made  and  sold  by  the  defendant 
contained  not  only  the  invention  of  the  complainant,  but 
contained  also  some  other  patented  or  unpatented  inven- 
tion, or  some  useful  feature  not  an  invention,  the  defendant, 
by  proving  how  much  of  his  profit  was  due  to  the  infring- 
ing features/  or  by  proving  how  much  was  due  to  other 
features  than  those  covered  by  the  patent  in  suit,3  may  con- 
fine the  recovery  to  the  former.  The  cases  just  cited  indi- 
cate that  the  burden  of  proof  in  this  matter  is  on  the  de- 
fendant ;  whereas  several  other  cases  hold  that  burden  to 
rest  on  the  complainant.4  But  this  line  of  precedents 
sprang  from  a  misapprehension  of  the  case  of  Blake  v.  Kob- 
ertson.5  The  damages  incurred  by  the  complainant  consti- 
tuted the  matter  of  inquiry  on  that  accounting,  and  as  no 
proper  evidence  was  introduced  on  that  point,  nominal 
damages  only  were  awarded  by  the  Supreme  Court.  The 
profits  spoken  of  in  that  case  were  those  made  by  the  com- 
plainant ;  not  those  realized  by  the  defendant.  Where  the 
first  of  these  constitute  the  subject  of  inquiry,  it  may  well 
be  held  that  the  burden  is  on  him  who  realized  them,  to 
separate  them  into  their  constituent  elements.  But  where 

1  Rubber  Co.  «.  Goodyear.  9  Wai-  v.  Munson,  14  Blatch.  265,  1877 ; 

lace,  804,  1869;  Manufacturing  Co.  Garretson  «.  Clark,  15  Blatch.  70, 

t>.  Cowing,  105  U.  8.  257,  1881;  La  1878  ;    Schillinger  «.   Gunther,   15 

Baw  t.  Hawkins,  2  Bann.  &  Ard.  Blatch.  303,  1878  ;  Star  Salt  Caster 

566,  1877.  Co.  t>.  Grossman,  4  Bann.  &  Ard. 

*  Vulcanite  Pavement  Co. ».  Pave-  567,  1879  ;  Kirby  t.  Armstrong,  19 

ment  Co.  36  Fed.  Rep.  378,  1888.  Off.    Gaz.    661,  1881 ;    Bostock   t> 

8  Rubber  Co.  *.  Goodyear,  9  Wai-  Goodrich,  25  Fed.  Rep.  819,  1885; 

lace,  804,  1869 ;  Elizabeth  v.  Pave-  Tuttle  v.  Gaylord.  28  Fed.  Rep.  97, 

ment  Co.  97  U.  8.  141.  1877.  1886  ;  Fay  t>.  Allen,  30  Fed.  Rep. 

4  Garretson  v.  Clark.  Ill  U.  8. 120,  446,  1887  ;  Tomkinson  c.  Mfg.  Co. 

1884;  Dobson  v.  Carpet  Co.  114  U.  34  Fed.  Rep.  536,  1888. 
8.  445,  1884;  Dobson  v.  Dornan.  118         5  Blake  v.  Robertson,  94  U.  S.  788, 

U.  8.  17,  1885 ;  Goulds  Mfg.  Co.  v.  1876. 
Cowing,  12  Blatch.  243, 1874;  Black 


526  PROFITS.  [CHAP.  xxn. 

the  defendant's  infringing  profits  are  the  point  of  investiga- 
tion, and  where  he  has  mingled  them  with  profits  legiti- 
mately his  own,  the  burden  is  on  him  to  show  the  amount 
of  the  latter  ;  because  he,  and  not  the  injured  party,  ought 
to  be  called  upon  to  separate  what  he  has  confused.1  In 
performing  such  a  duty,  defendants  should  proceed  accord- 
ing to  the  following  rules. 

§  720.  Where  the  defendant  made  and  sold  the  com- 
plainant's invention  separately,  as  well  as  in  connection 
with  other  inventions,  the  profit  which  he  made  on  the 
separate  sales  is  the  measure  of  that  part  which  is  to  be 
credited  to  the  complainant's  invention,  of  the  profit  which 
the  defendant  made  on  the  joint  sales.1  This  is  a  fairer 
method  of  division  in  such  a  case  than  would  be  a  division 
of  the  gross  profits  in  proportion  of  the  comparative  cost 
of  the  elements  covered  by  the  patent  in  suit,  and  those  not 
so  covered  ;  because  the  comparative  cost  is  not  often  the 
best  evidence  of  the  comparative  utility  of  two  devices,  nor 
of  the  comparative  profit  at  which  they  can  be  made  and 
sold.3 

§  721.  Where  the  defendant  has  paid  or  contracted  to  pay 
other  patentees  a  royalty  for  that  part  of  the  thing  made 
and  sold  by  him  which  is  not  covered  by  the  complainant's 
patent,  that  royalty  may  be  taken  as  the  measure  of  that 
part  of  the  gross  profits  due  to  that  part  of  the  article  in 
suit.4  But  it  seems  that  this  rule  is  not  to  be  applied  in  any 
case  where  the  division  of  the  profits  can  be  made  under 
the  rule  of  the  last  section ;  because  it  may  sometimes  be 
that  the  profits  due  to  that  part  of  the  infringing  thing 
which  is  not  covered  by  the  complainant's  patent,  are  larger 
than  the  royalty  which  the  defendant  had  to  pay  for  the 
right  to  make  and  sell  that  part. 

§  722.  Where  the  thing  made  and  sold  by  the  defendant 

1  Callaghan  v.  JTyers,  128  U    S.  1872. 

666,  1888.  4  Elizabeth  «.  Pavement  Co.  97 

»  Mason  v.  Graham,  23  Wallace,  U.  S.  141, 1877;  La  Baw  v.  Hawkins, 

2f6,  1874.  2  Banu.  &  Ard.  565,  1877. 

3  Graham  v.  Mason,  1  Holmes,  89, 


CHAP.  XXII.]  PROFITS.  527 

would  be  useless  for  its  special  purpose  without  the  part 
covered  by  the  complainant's  patent ;  or  where  no  other 
known  article  would  answer  that  purpose  well  enough  to 
find  purchasers,  all  the  profits  which  the  infringer  derived 
from  making  and  selling  the  entire  thing  are  clearly  due  to 
the  patented  part,  and  are  therefore  recoverable  by  the 
complainant.1 

§  723.  Where  the  profits  due  to  the  infringing,  and  those 
due  to  the  non-infringing,  elements  of  a  defendant's  article 
of  manufacture  and  sale,  cannot  be  separated  by  any  other 
rule  ;  then  the  apportionment  may  be  made  by  dividing  the 
aggregate  profits  in  proportion  of  the  respective  cost  of  the 
different  parts.  This  method  of  making  the  division  is 
based  on  the  presumption  that  similar  articles  of  mer- 
chandise are  sold  at  a  like  percentage  of  profit  on  the  cost 
of  producing  them.  But  this  is  not  likely  to  be  the  fact 
where  one  of  those  articles  is  covered  by  a  patent  while  the 
others  are  not  so  covered,  because  monopolies  tend  to  en- 
hance prices.  This  method  of  making  the  required  division 
will  therefore  always  be  more  favorable  to  the  defendant 
than  to  the  complainant,  where  no  part  of  the  article  made 
and  sold  by  the  former  is  covered  by  a  patent,  except  the 
part  which  is  covered  by  the  patent  of  the  latter.  The 
principle  of  this  method  was  approved  in  Rubber  Co.  v. 
Goodyear,1  though  in  that  case  it  was  applied  to  the  work 
of  dividing  profits  between  things  covered  and  other  things 
not  covered  by  the  complainant's  patent,  instead  of  be- 
tween parts  of  the  same  thing  so  covered,  and  other  parts 
not  so  covered. 

§  724.  Where  the  infringement  consisted  only  in  selling 
specimens  of  the  article  covered  by  the  complainant's 
patent,  the  profits  may  be  readily  ascertained  by  deducting 
the  cost  of  purchasing  and  selling  the  articles  from  the 
amount  received  from  them  when  sold.  Where  the  subject- 


1  Manufacturing  Co.  e.  Cowing,      Lawrence,  29  Fed.  Rep.  918,  1886. 
105  U.  S.  256, 1881 ;  Hurlbut  t>.  Schil-         »  Rubber  Co.  9.  Goodyear,  9  Wai- 
linger,  130  U.  S.       ,  1889;  Reed  9.      lace,  802,  1869. 


528  PROFITS.  [CHAP.  xxn. 

matter  of  the  patent  is  a  part  of  a  larger  article,  and  where 
a  separate  price  is  paid,  and  a  separate  price  is  obtained 
for  it,  the  gross  profit  on  the  thing  covered  by  the  patent 
may  be  ascertained  by  deducting  the  former  from  the  ]atter. 
But  in  such  a  case  the  complainant  is  not  entitled  to  re- 
cover the  whole  of  that  gross  profit.  It  must  be  charged 
with  such  a  proportion  of  the  expenses  incurred  in  selling 
the  entire  article,  as  the  aggregate  money  received  from  the 
infringing  device  bears  to  the  aggregate  received  for  the 
entire  apparatus  or  machine.1  The  principle  of  this  rule  is 
also  applicable  where  the  infringer  made  the  articles  he 
sold  instead  of  buying  them ;  and  the  rules  applicable  to 
the  latter  class  of  cases,  and  heretofore  set  forth  are  appli- 
cable, with  some  reasonable  modifications,  to  cases  where 
the  infringer  bought  the  infringing  articles  which  he  sold, 
instead  of  making  them  himself. 

§  725.  Where'  unlawful  using  of  a  patented  article  or  pro- 
cess constitutes  the  infringement  involved  in  an  action  in 
equity,  the  infringer's  profits  are  ascertained  by  a  rule  quite 
different  from  either  of  the  foregoing.  It  is  known  as  the 
rule  in  Mowry  v.  Whitney  ; "  though  in  that  case  it  is  for- 
mulated according  to  the  special  circumstances  at  bar, 
rather  than  in  the  more  general  terms  which  express  its 
principle  in  general  application.  The  exact  language  used 
by  the  Supreme  Court  was  as  follows :  "  The  question  to 
be  determined  in  this  case  is,  what  advantage  did  the  de- 
fendant derive  from  using  the  complainant's  invention,  over 
what  he  had  in  using  other  processes,  then  open  to  the 
public,  and  adequate  to  enable  him  to  obtain  an  equally 
beneficial  result?  The  fruits  of  that  advantage  are  his 
profits."  This  statement  has  two  qualifications  which  were 
suitable  enough  to  the  case  at  bar,  but  which  do  not  appear 
to  belong  to  the  underlying  principle  of  the  rule.  These 
are,  that  the  standard  of  comparison  must  have  been  open 
to  the  public  at  the  time  of  the  infringement,  and  must  have 


'The  Tremolo  Patent,   23  Wai-         *  Mowry  n.  Whitney,  14  Wallace, 
lace,  528,  1874.  651,  1871. 


CHAP.  XXII.]  PROFITS.  529 

been  adequate  to  enable  the  defendant  to  obtain  a  result 
equally  beneficial  with  that  of  the  patented  invention. 

§  726.  The  first  of  these  qualifications  is  not  generally 
applicable  to  the  rule,  because  the  profits  derived  from  the 
use  of  a  patented  invention  depend  upon  its  utility  and 
cheapness  as  compared  with  other  inventions  for  perform- 
ing the  same  function  ;  and  that  comparative  cheapness  and 
utility  does  not  wholly  depend  upon  whether  those  other 
inventions  were  given  to  the  public,  or  were  patented  by 
those  who  invented  them,  or  if  the  latter,  upon  whether  those 
patents  had  expired  at  the  time  in  question.     If  the  inven- 
tion which  was  next  best  to  that  of  the  complainant,  was 
patented  at  the  time  of  the  infringement,  and  if  the  defend- 
ant had  a  license  to  use  it,  but  instead  of  doing  so,  used  that 
of  the  complainant ;  it  is  clear  that  the  advantage  he  de- 
rived from  his  infringement  is  nearly  measured  by  the  differ- 
ence between  the  respective  utility  of  the  two  inventions. 
So,  also,  if  he  did  not  have  a  license  to  use  the  next  best 
invention,  but  could  have  purchased  one  had  he  desired, 
then  it  is  clear  that  the  advantage  he  derived  from  his  in- 
fringement  is   measured   by   the   difference   between   the 
utility  of  the  two  inventions,  plus  whatever  amount  such  a 
license   would   have   cost.     And  if  the  defendant  neither 
possessed  nor  could  have  purchased  a  license  to  use  the 
next  best  invention,  it  is  obvious  that  the  advantage  which 
he  derived  from  his  infringement,  is  measured  by  the  dif- 
ference between  the  utility  of  the  two  inventions,  plus  the 
money  recovery  which  could  have  been  obtained  against 
him  if  he  had  used  the  next  best  invention  without  a  license. 
If  the  patent  covering  the  next  best  invention  was  in  such 
a  state  that  its  owner  could  have  enjoined  the  infringer 
from  using  it,  then  the  infringer  could  have  derived  no 
benefit  from  its  use,  and  it  falls,  for  that  reason,  outside  of 
the  general  rule.     Thus  this  paragraph  seems  to  show  that 
there  is  no  just  necessity  for  the  first  qualification  in  the 
special  statement,  being  applied  to  the  general  doctrine ; 
and  the  next  paragraph  explains  how  such  a  qualification 
would  often  be  affirmatively  unjust. 


530  PROFITS.  [CHAP.  xxn. 

Where,  for  example,  A.  B.  has  a  patent  for  one  appara- 
tus, and  where  C.  D.  has  a  junior  patent  for  another  com- 
bination performing  the  same  function,  and  infringing  A. 
B.'s  patent ;  and  where  E.  F.,  who  has  used  C.  D.'s  appara- 
tus, is  sued  in  equity  by  him,  and  compelled  to  account  for 
infringer's  profits,  the  infringer  ought  to  be  permitted  to 
set  up  the  apparatus  of  A.  B.  as  a  standard  of  comparison ; 
for  otherwise  he  will  be  compelled  to  pay  over  to  C.  D.  the 
entire  fruits  of  certain  advantages,  and  still  remain  liable  to 
A.  B.  for  a  portion  of  those  fruits.  Accordingly,  in  the 
case  of  Emigh  v.  Railroad  Co.,1  the  defendant  was  permitted 
to  set  up  a  standard  of  comparison  which  was  the  subject 
of  letters  patent  during  the  time  of  the  infringement  in  suit, 
even  though  the  defendant  never  had  any  license  to  use  the 
invention  thus  allowed  to  be  set  up.  These  facts  about  the 
Hodge  brake,  which  was  the  standard  of  comparison  in 
that  case,  do  not  appear  in  the  opinion  of  the  judges,  but 
they  do  appear  in  the  records  of  the  court. 

§  727.  The  second  of  the  qualifications  mentioned  in 
Section  725  is  not  generally  applicable  to  the  doctrine  of 
the  rule  in  Mowry  v.  Whitney ;  because  the  difference  be- 
tween the  utility  of  two  inventions  may  arise  from  the  fact 
that  one  performs  the  function  common  to  both,  with  equal 
cheapness  and  greater  excellence,  or  with  greater  cheap- 
ness and  greater  excellence,  as  well  as  from  the  fact  that  it 
performs  that  function  with  greater  cheapness  and  equal 
excellence.  The  last  of  these  sorts  of  superiority  charac- 
terized the  invention  covered  by  the  patent  sued  upon  in 
Mowry  v.  Whitney ;  but  the  principle  of  the  rule  in  that 
case  is  equally  applicable  to  cases  where  the  first  or  the 
second  sort  of  superiority  is  possessed  by  the  invention  in 
suit,  as  compared  with  the  prior  invention  set  up  as  a 
standard  of  comparison. 

§  728.  It  appears  from  the  foregoing  three  sections  that 
the  general  principle  involved  in  the  rule  of  Mowry  v. 
Whitney  may  be  fully  stated  in  the  following  form.  The 

1  Emigh  c.  Railroad  Co.  6  Fed.  Rep.  383,  1881. 


CHAP.  XXII.]  PROFITS.  531 

fruits  of  the  advantage  which  the  defendant  derived  from 
using  the  complainant's  invention,  over  what  he  could  have 
derived  from  using  any  other  process  or  thing  then  in  ex- 
istence, constitute  the  profits  which  the  complainant  is  en- 
titled to  recover.  The  advantage  referred  to  in  this  rule, 
may  consist  either  in  an  affirmative  gain,  or  in  a  saving  from 
loss,  or  in  both  of  these  elements ;  and  the  fruits  of  that 
advantage  constitute  the  recoverable  profits  in  either  event. 

§  729.  The  advantage  consists  in  an  affirmative  gain  in 
cases  wherein  the  patented  process  or  thing  produces  a  val- 
uable article  from  materials  which  otherwise  would  be  use- 
less, or,  if  useful  at  all,  useful  only  for  purposes  of  inferior 
value.  The  Goodyear  process  patent,1  if  it  had  been  valid, 
would  have  been  a  patent  of  this  sort,  and  would  have  been 
entitled  to  an  account  of  profits  ascertained  according  to 
the  rule  in  Mowry  v.  Whitney.  But  as  the  only  patent  sus- 
tained in  the  Goodyear  case  was  the  patent  for  the  product, 
and  inasmuch  as  that  patent  was  infringed  by  the  defend- 
ant only  in  making  and  selling  specimens  of  the  invention 
it  covered,  the  profits  were  ascertained  on  an  entirely  differ- 
ent plan. 

§  730.  But  the  advantage  consisted  in  saving  from  loss, 
in  most  of  the  cases  which  have  been  adjudicated  under  the 
rule  in  Mowry  v.  Whitney.  In  the  case^f  the  Cawood  pat- 
ent," the  saving  was  a  saving  of  labo^md  of  fuel  realized 
from  the  use  of  the  complainant's  swage-block  in  mending 
the  exfoliated  ends  of  railroad  rails,  as  compared  with  the 
labor  and  fuel  it  would  have  been  necessary  to  expend  in 
mending  those  rails  upon  a  common  anvil.  In  Mevs  v. 
Conover,3  the  saving  was  a  saving  of  labor  in  splitting  kind- 
ling-wood, by  means  of  the  patented  machine  of  the  com- 
plainant, as  compared  with  the  labor  which  would  have 
been  required  to  split  the  same  quantity  of  wood  by  hand, 
or  by  any  other  machine.  The  decision  of  the  Supreme 


1  Rubber  Co.  t?.' Goodyear,  9  Wai.      1876. 

lace,  794,  1869.  *  Mevs  «.  Conover,  11  Off.  Gaz. 

*  Cawood  Patent,   94  U.   S.  709,      1111,  1876. 


532  PKOFITS.  [CHAP.  xxn. 

Court  in  the  latter  case  was  never  printed  in  the  United 
States  Reports,  but  its  authenticity,  as  contained  in  the 
Official  Gazette  of  the  Patent  Office,  has  not  been  ques- 
tioned, though  its  justice  has  sometimes  been  made  a  sub- 
ject of  debate.  Those  who  have  denied  that  justice,  have 
said  that  there  was  no  actual  profit  made  by  the  infringer 
in  splitting  the  wood,  and  have  argued  that  he  would  not 
have  split  the  wood  at  all  if  he  had  been  obliged  to  do  so 
otherwise  than  by  the  patented  machine,  and  that  to  save  a 
man  from  a  loss  which  he  would  not  have  incurred  in  any 
event,  is  not  to  confer  a  profit  upon  him,  and  therefore  that 
savings  ought  not  to  be  accounted  as  profits  except  where 
they  result  in  actual  gains.  But  the  case  as  reported  from 
the  circuit  court,1  shows  that  the  defendant  did  continue  to 
split  kindling-wood  after  the  bringing  of  the  suit  caused 
him  to  discontinue  the  use  of  the  complainant's  invention 
for  that  purpose.  It  was  probably  necessary  for  him  to  do 
so,  in  order  to  hold  his  customers  for  other  kinds  of  fuel. 
Therefore  the  case  is  not  a  precedent  for  the  proposition 
that  savings  are  profits,  where  there  was  no  actual  profit  in 
the  particular  business  in  which  the  complainant's  inven- 
tion was  used,  and  where  there  was  no  reason  why  the  de- 
fendant should  have  pursued  that  business,  if  obliged  to  do 
so  at  a  positive  loss.  It  is  entirely  consistent  with  the  prin- 
ciple of  the  rule  in  Mowry  v.  Whitney  to  hold  that  savings 
are  profits,  only  so  far  as  they  result  in  affirmative  gains 
from  the  particular  business  in  which  the  infringer  used  the 
patented  invention  ;  unless  that  particular  business  was  so 
necessary  to  the  general  business  of  the  infringer,  that  he 
could  have  afforded  to  conduct  it  at  an  additional  loss,  at 
least  equal  to  the  saving  he  made  from  the  use  of  the  com- 
plainant's invention,  and  therefore  presumably  would  have 
conducted  it  at  that  loss,  if  he  had  not  used  that  invention. 
But  it  is  undoubtedly  sufficient  for  a  complainant  to 
prove  the  amount  of  savings  which  the  defendant  derived 
from  his  infringement,  in  order  to  prima  facie  entitle  the 

1  Conover  v.  Mevs,  11  Blatch.  198,  1873. 


CHAP.  XXII.]  PROFITS.  533 

former  to  a  decree  for  that  amount  as  infringer's  profits. 
Then  if  the  defendant  can  prove  that  those  savings  did  not 
result  in  actual  gain,  or  in  actual  gain  to  so  great  an  amount, 
and  that  he  would  not  have  attempted  to  do  the  work  of 
the  patented  process  or  thing  at  all,  by  any  other  means 
than  it ;  those  facts  will  entitle  him  to  an  acquittance  from 
all  liability  for  profits  in  excess  of  his  actual  gains. 

§  731.  The  advantage  referred  to  in  the  rule  in  Howry  v. 
Whitney  consisted  both  in  affirmative  gains  and  in  savings 
from  loss  in  a  number  of  important  cases.  In  Tilghman  v. 
Proctor,1  it  consisted  in  savings  of  lime  and  sulphuric  acid  ; 
and  in  gain  on  account  of  the  increased  value  of  the  glyc- 
erine obtainable  by  means  of  the  complainant's  invention, 
as  compared  with  that  obtainable  by  other  processes.  In 
Whetherill  v.  Zinc  Co.,a  the  advantage  consisted  in  savings 
of  coal  and  labor,  in  reducing  zinc  ores ;  and  in  gain  on  ac- 
count of  the  increased  proportion  of  zinc  obtained  by  the 
complainant's  process  as  compared  with  other  processes 
used  for  that  purpose. 

§  732.  The  standard  of  comparison  set  up  by  a  defendant 
needs  not  to  have  been  used  by  him  at  any  time,3  and  where 
it  never  was  so  used,  the  evidence  of  its  utility,  as  compared 
with  the  invention  in  suit,  may  be  drawn  from  persons  who 
have  used  the  two  under  the  same  conditions  ; 4  or  from  any 
other  source  which  is  capable  of  furnishing  convincing  evi- 
dence upon  the  point.  And  even  where  the  defendants 
have  used  the  standard  of  comparison,  they  may  show  that 
it  was  used  with  better  results  by  others,  and  may  have  the 
benefit  of  that  superiority  on  the  accounting.6 

§  733.  To  be  admissible  as  a  standard  of  comparison,  a 
process  or  thing  must  have  been  known  at  the  time  of  the 
infringement.'  But  it  need  not  have  been  in  existence  at 

1  Tilghman  t?.  Proctor,  125  U.  8.  *  Emigh  v.  Railroad  Co.  6  Fed. 

143,  1888.  Rep.  283,  1881. 

*  Wetherill  v.  Zinc  Co.  1  Bann.  &  6  Tilghman  v.  Proctor,  125  U.  8. 

Ard.  486,  1874.  150,  1888. 

8  Locomotive  Safety  Truck  Co.  v.  •  Knox  «.  Quicksilver  Mining  Co. 

Railroad  Co.  2  Fed.  Rep.  679,  1880.  6  Sawyer,  436,  1878. 


534  PROFITS.  [CHAP.  xxn. 

any  earlier  period ; '  because  comparative  utility  and  cheap- 
ness, and  not  comparative  age,  at  the  time  of  the  infringe- 
ment, is  the  test  of  the  savings  or  gains  which  result  there- 
from. If  A.  B.  has  in  his  mill  two  substantially  different 
machines  for  doing  the  same  work,  one  of  which  is  an  in- 
fringement of  a  patent,  and  the  other  of  which  was  invented 
and  constructed  by  him  after  the  date  of  that  patent ;  and 
if  he  uses  those  machines  simultaneously,  with  equal  value 
of  result,  but  with  difference  in  cost  of  ten  dollars  per  day 
in  favor  of  the  patented  machine,  it  is  clear  that  his  saving 
on  account  of  his  infringement  amounts  to  ten  dollars  per 
day,  plus  what  it  would  have  cost  him  to  construct  a  dupli- 
cate of  his  own  invention.  And  his  saving  would  be  pre- 
cisely the  same,  if  his  own  invention  had  been  produced 
before  the  date  of  the  patented  invention  unlawfully  used 
by  him.  The  comparative  age  of  the  two  inventions,  has 
no  effect  whatever  upon  the  pecuniary  advantage  which  he 
realizes  from  the  one  which  he  uses  unlawfully.  This  rule 
would  of  course  annihilate  claims  for  savings,  if  the  com- 
parative cheapness  of  operating  the  two  machines  were  re- 
versed, and  if  the  ten  dollars  per  day  amounted  to  as  much 
as  it  would  cost  to  duplicate  the  infringer's  own  machine. 
But  in  such  a  case  the  patentee  would  still  have  his  remedy . 
for  damages ;  and  in  assessing  damages  the  criterion  would 
be  his  actual  royalty,  or  a  proper  royalty  fixed  by  the  court 
or  jury  for  the  purpose,  or  whatever  other  measure  of  dam- 
ages the  patentee  might  be  able  to  prove  to  be  applicable 
to  his  case.  The  defendant's  savings  or  lack  of  savings 
would  have  no  relevancy  whatever,  to  either  of  the  possible 
criteria  to  which  the  patentee  might  resort  in  this  behalf, 
except  only  the  second  one  just  mentioned,  and  even  as  to 
that  it  would  not  be  conclusive.* 

§  734.  To  determine  what  is  the  proper  standard  of  com- 
parison in  a  particular  case,  it  is  not  necessary  for  the  com- 
plainant to  affirmatively  prove  that  a  particular  thing  was 


1  Shannon  v.  Bruner,  33  Fed.  Rep.          »  Sections  555,  556,  and  563  of  this 
874, 1888.  book. 


CHAP.  XXII.]  PROFITS.  535 

absolutely  the  next  best  thing  to  his  invention  at  the  time 
of  the  infringement.  Such  a  requirement  would  not  be  rea- 
sonable, because  it  could  never  be  performed.  It  would 
involve  evidence  enough  to  negative  the  existence  of  a  bet- 
ter thing  than  the  one  fixed  upon  ;  and  to  prove  that  no 
better  thing  existed  anywhere  would  obviously  be  impossi- 
ble. The  regular  course  of  practice  on  the  point  is  for  the 
complainant  to  select  what  appears  to  him  to  be  the  proper 
standard  of  comparison,  and  to  produce  evidence  to  prove 
what  advantage  the  defendant  derived  from  using  the  com- 
plainant's invention  over  what  he  could  have  derived  from 
using  the  thing  so  selected.  Where  the  defendant  knows 
of  no  standard  of  comparison  more  favorable  to  himself 
than  the  one  selected  by  the  complainant,  the  only  remain- 
ing issue  relates  to  the  utility  and  cheapness  of  that  thing, 
as  compared  with  the  complainant's  invention.1  Where  the 
defendant  is  not  satisfied  that  the  complainant  has  made 
the  proper  selection  of  a  standard  of  comparison,  he  may 
select  another,  and  may  produce  evidence  to  show  its  util- 
ity and  cheapness  as  compared  with  that  of  the  invention 
covered  by  the  patent  in  suit ;  and  when  the  case  comes  to 
a  hearing  before  the  master,  the  first  question  to  be  decided 
by  him  will  be  as  to  which  of  the  parties  has  made  the 
proper  selection.  When  that  point  is  settled,  all  evidence 
about  the  merits  of  the  other  proposed  standard  will  be- 
come and  remain  immaterial  to  the  case.  For  this  reason 
it  is  always  best  for  the  interest  of  a  party  to  make  the 
proper  selection  if  he  can,  and  it  is  never  judicious  to  make 
one  which  cannot  be  sustained  before  the  master  and  the 
courts,  no  matter  how  favorable  it  may  be  to  the  party  who 
selects  it. 

The  true  standard  of  comparison  in  a  particular  case  is 
that  thing  which,  next  to  the  complainant's  invention,  could 
have  been  most  advantageously  used  by  the  defendant  in 
place  of  that  invention  at  the  time  he  used  the  latter.  To 
determine  this  point,  comparative  utility  is  the  primary 

1  Emigh  0.  Railroad  Co.  6  Fed.  Rep.  285,  1881. 


536  PROFITS.  [CHAP.  xxn. 

guide,  but  regard  must  also  be  had  to  cheapness,  for  the 
advantage  contemplated  by  the  rule  in  Mowry  v.  Whitney 
is  the  equalized  result  of  these  two  elements.  The  cost  of 
a  thing,  and  of  the  right  to  use  it,  if  that  right  is  the  sub- 
ject of  a  patent,  must  be  taken  into  account,  together  with 
its  utility,  when  selecting  a  standard  of  comparison,  and 
when  comparing  a  selected  standard,  with  the  invention  un- 
lawfully used  by  the  defendant. 

§  735.  The  rule  in  Mowry  v.  Whitney  has  no  application 
to  any  of  those  cases  of  infringement  which  consist  in  mak- 
ing and  selling  a  patented  article,  or  in  either  of  those  acts 
alone.  In  such  cases  the  infringer's  profits  are  ascertained 
by  quite  different  rules.1  In  Elizabeth  v.  Pavement  Co., 
the  infringement  consisted  only  in  making  the  patented 
pavement  to  order ;  that  is  to  say,  it  consisted  in  making 
and  selling  the  patented  article.  The  defendants  sought  to 
have  the  profits  determined,  under  the  rule  in  Mowry  v. 
Whitney,  by  setting  up  other  pavements  as  standards  of 
comparison ;  but  the  Supreme  Court  held  their  position  on 
the  point  to  be  without  foundation.2  The  rule  in  Mowry  v. 
Whitney  was  also  unsuccessfully  invoked  in  the  case  of 
Burdett  v.  Estey,  though  the  argument  in  favor  of  its  appli- 
cation was  supported  by  evidence  that  the  defendant  might 
have  made  and  sold  a  different  device  at  nearly  or  quite  the 
same  profit  that  he  derived  from  making  and  selling  the  de- 
vice covered  by  the  complainant's  patent.3 

§  736.  The  questions  which  relate  to  interest  on  infringers' 
profits,  are  questions  which  still  await  a  comprehensive  an- 
swer. It  is  not  possible  to  reconcile  the  Supreme  and  Cir- 
cuit Court  cases  which  relate  to  the  subject ;  but  it  is  pos- 
sible to  show  the  direction  in  which  the  ablest  of  those 
decisions,  and  the  principles  of  law  which  bear  upon  the 
point,  seem  to  be  tending. 

The  first  Supreme  Court  case  in  which  the  matter  was 


1  Sections  717  to  734  of  this  book.          3  Burdett  «.   Estey,   3  Fed.  Rep. 

2  Elizabeth  «.   Pavement  Co.  97      569,  1880. 
U.  8. 141,  1877. 


CHAP.  XXII.]  PROFITS.  537 

directly  treated  was  that  of  Silsby  v.  Foote.1  In  it  the 
court  below  allowed  interest  which  accrued  prior  to  the 
final  decree,  but  a  majority  of  the  Supreme  Court  was  of 
opinion  that  there  was  error  in  the  allowance,  and  the  item 
was  accordingly  ordered  to  be  deducted  from  the  account. 
No  reasons  were  assigned  by  the  majority  for  its  opinion, 
nor  by  the  minority  for  its  dissent.  A  judicial  decision 
without  any  statement  of  reasons  to  support  it,  is  of  course 
binding  upon  the  parties  to  the  litigation  in  which  it  is 
rendered,  and  it  is  doubtless  citable  as  a  precedent  as  far 
as  it  can  be  supported  by  good  reasons  subsequently  sug- 
gested in  its  behalf.  But  where  no  reasons  are  given  by  the 
judges,  and  none  are  apparent  to  the  bar,  such  a  decision 
ought  not  to  be  incorporated  into  the  law ;  because  it  may 
have  been  based  on  considerations  which  were  peculiar  to 
the  case  in  hand  and  are  without  relevancy  to  the  general 
principle  involved  in  other  similar  cases. 

The  next  case  was  Mowry  v.  Whitney.1  Interest  before 
the  final  decree  was  disallowed  in  it,  for  the  assigned  reason 
that  profits  were  recoverable  and  were  recovered  merely  as 
the  measure  of  the  complainant's  damages ;  and  that  as 
damages  are  generally  unliquidated  till  settled  by  the  judg- 
ment of  the  court,  they  do  not  generally  draw  interest  till 
so  settled.  But  the  doctrine  which  constitutes  the  first  ele- 
ment of  this  reason  is  no  longer  the  accepted  view  of  the 
Supreme  Court  on  the  subject  to  which  it  relates.  The 
present  rule  is  that  infringers'  profits,  when  allowed,  are 
given  as  a  substitute  for  damages,  and  are  ascertained  and 
treated  as  though  the  infringer  were  a  trustee  of  the  patentee 
in  respect  to  those  profits.3  It  is  also  apparent  from  other 
Supreme  Court  cases  that  equity  does  not  decree  infringers' 
profits,  on  any  such  doctrine  as  that  they  are  really  dam- 
ages under  another  name.  A  court  of  equity  may  indeed 
assess  damages  in  addition  to  profits,  under  the  present 


1  Silsby  «.  Foote,  20  Howard,  386,      652,  1871. 

1857.  *  Root  «.  Railway  Co.  105  U.  S. 

*  Mowry  t>.  Whitney,  14  Wallace,      214,  1881. 


538  PROFITS.  [CHAP.  xxn. 

statute  ; l  but  it  follows  the  law  in  so  doing,  and  ascertains 
them  by  means  of  the  legal  rules  established  for  that 
purpose.2  The  Supreme  Court  has  repeatedly  refused  to 
measure  a  plaintiff's  damages  by  the  defendant's  profits  in 
actions  at  law ; 3  and  therefore  courts  of  equity  will  not 
measure  those  damages  in  that  way.  Indeed,  no  judge  can 
logically  say  that  he  has  ascertained  a  complainant's  loss, 
by  ascertaining  a  defendant's  gain ;  for  there  are  no  facts 
which  can  operate  to  make  the  two  sums  coincide  in  amount. 
Moreover,  if  infringers'  profits  were  the  measure  of  pat- 
entees' damages,  decrees  for  such  damages  would  go  against 
all  the  joint  infringers  in  a  case,  regardless  of  which  of  them 
appropriated  the  proceeds  of  their  joint  wrong-doing.4  But 
the  Supreme  Court  has  refused  to  approve  such  a  decree, 
on  the  express  ground  that  profits  and  not  damages  were 
then  the  only  subject  of  inquiry  and  recovery  in  equity.6 
It  appears,  therefore,  that  the  opinion  of  the  Supreme 
Court  in  Mowry  v.  Whitney,  upon  the  point  of  recover- 
ability  of  interest  on  infringers'  profits,  cannot  stand  as  a 
precedent,  now  that  the  primary  element  of  its  foundation 
has  been  denied  an  existence  by  that  tribunal.  The  same 
remark  applies  also  to  the  similar  declarations  which  are  to 
be  found  in  two  other  Supreme  Court  cases." 

§  737.  The  Circuit  Courts  have  usually  treated  the  subject 
of  interest  on  infringers'  profits  in  such  a  way  as  to  indicate 
an  opinion  that  the  earlier  holdings  of  the  Supreme  Court 
on  that  subject  were  not  likely  to  be  permanently  adhered 
to  by  that  tribunal.  Justice  NELSON,  who  delivered  the 
opinion  in  Silsby  v.  Foote,  was  evidently  opposed  to  its 
disallowance  of  interest,  for  he  had  very  lately  allowed  in- 
terest which  accrued  prior  to  a  final  decree  in  a  similar 

1  Revised  Statutes,  Section  4921.  4  Cooley  on  Torts,  p.  135. 

4  Chapter  XIX.  of  this  book.  5  Elizabeth  v.  Pavement  Co.  97  U. 

3  Seymour?).  McCormick,  16 How-  S.  140,  1877. 

ard,  480,  1853 ;  New  York  v.  Ran-  6  Littlefield  «.  Perry,  21  Wallace, 

som,  23  Howard,  487,  1859 ;  Packet  229,  1874 ;  Parks  ».  Booth,  102  U. 

Co.  v.  Sickels,  19  Wallace,  611, 1873.  S.  106,  1880. 


CHAP.  XXII.]  PROFITS.  539 

case.1  Nor  did  he  feel  bound  to  follow  the  decision  in 
Silsby  v.  Foote,  even  after  it  was  rendered,  for  he  subse- 
quently concurred  in  a  decree  for  infringers'  profits  and 
twenty  years'  accrued  interest  thereon.*  So  also,  Justice 
BLATCHFOBD  afterward  rendered  a  decree  for  such  interest 
to  the  amount  of  more  than  sixty  thousand  dollars,  com- 
puting it  from  the  end  of  each  year  of  the  infringement, 
upon  the  profits  which  were  derived  during  that  year.*  It 
is  true  that  his  decree  was  reversed  by  the  Supreme  Court, 
but  it  was  reversed  on  the  question  of  infringement  alone/ 
and  the  Supreme  Court  afterward  unanimously  decided 
that  its  own  decision  on  that  point  was  wrong.6  Even  after 
Mowry  v.  Whitney  and  Littlefield  v.  Perry  were  decided  by 
the  Supreme  Court,  large  sums  of  interest  which  accrued 
on  infringers'  profits  prior  to  the  final  decrees,  were  allowed 
in  circuit  court  cases,  on  the  ground  that  the  defendants 
ought  to  pay  interest  on  their  profits  for  the  time  they 
wrongfully  detained  those  profits  from  their  true  owners.8 

§  738.  The  primary  principle  involved  in  this  question  of 
interest,  is  that  equity  treats  an  infringer  as  though  he  were  a 
trustee  for  the  patentee  in  respect  of  the  infringer's  profits.7 
To  ascertain  how  equity  will  treat  an  infringer  in  respect  of 
interest  on  the  profits  which  he  derived  from  his  infringe- 
ment, it  is  therefore  only  necessary  to  ascertain  how  it  treats 
trustees  in  respect  of  interest  on  trust  funds.  Chancellor 
KENT  is  an  excellent  authority  on  this  point.  He  held  that 
where  trustees  converted  property  of  the  cestui  qui  trust 
into  cash,  and  mixed  that  cash  with  their  own  funds,  and 
used  it  in  their  own  business,  they  were  chargeable  with 
legal  interest  thereon.8  That  is  substantially  the  conduct 

1  Tatham  v.  Lowber,  4  Blatch.  87,  707,  1880. 

1857.  •  Steam  Stone  Cutter  Co.  v.  Wind- 

*  Troy  Iron  and  Nail  Factory  ».  sor  Manufacturing  Co.  17  Blatch.  24, 

Corning,  6  Blatch.  355,  1869.  1879;  Burdett  t>.  Estey,  3  Fed.  Rep. 

3  Tilghman  «.  Mitchell,  9  Blatch.  571,  1880. 

17,  1871.  '  Root  v.  Railway  Co.  105  U.  8. 

4  Mitchell  v.  Tilghman,  19  Wai-      214,  1881. 

lace,  287,  1873  8  Brown  t>.  Rickets,  4  Johnson's 

5  Tilghman  v.  Proctor,  102  U.  S.      Chancery  (N.  Y.),  303,  1820. 


540  PROFITS.  [CHAP.  xxn. 

of  infringers  of  patents.  '  They  convert  patented  property 
into  cash  when  they  make  and  sell,  or  sell,  or  use  specimens 
of  patented  inventions  at  a  profit.  That  cash  is  always 
mixed  with  funds  of  the  infringer,  in  that  when  received 
by  him  it  is  always  a  part  of  a  larger  sum.  Where  the 
infringement  consists  in  making  and  selling,  that  larger 
sum  includes  the  cost  of  both  those  transactions ;  and 
where  it  consists  in  selling,  that  larger  sum  includes  the 
cost  of  selling  and  of  buying ;  and  where  the  infringement 
consists  of  using  only,  that  larger  sum  includes  the  profits 
which  might  have  been  derived  from  using  some  other  in- 
vention in  existence  at  the  time  of  the  infringement.  So 
also,  infringers  regularly  use  in  their  own  business  the 
profits  which  their  infringements  bring  to  their  coffers. 
Those  profits  may  sometimes  remain  with  other  funds  for  a 
while  on  deposit  in  a  bank,  but  even  that  is  a  use  of  those 
profits  in  the  business  of  the  depositor.1 

Chancellor  KENT  held,  in  the  case  cited  from  him,  that  a 
trustee  must  not  be  a  gainer  from  his  employment  of  the 
trust  funds,  and  expressed  surprise  that  such  a  just  and 
well-established  point  of  law  should  have  been  drawn  in 
question.  In  applying  that  rule  to  an  infringer  of  a  patent, 
when  treating  him  as  though  he  were  a  trustee,  it  will  gen- 
erally be  found  that  a  decree  for  legal  interest  on  the  profits 
he  derived  from  his  infringement  is  the  proper  order  to 
make ;  becase  it  can  seldom  be  known  precisely  how  much 
the  infringer  did  gain  from  his  use  of  those  profits,  and  be- 
cause in  the  absence  of  such  information,  a  decree  for  legal 
interest  is  the  nearest  approach  that  can  be  made  to  perfect 
justice.  It  is  open  to  the  patentee  to  prove,  if  he  can,  that 
the  use  which  the  infringer  made  of  those  profits  resulted 
in  a  rate  of  gain  larger  than  the  legal  rate  of  interest ;  but 
it  is  not  open  to  the  infringer  to  prove  that  he  traded  with 
those  profits  and  lost  thereby,  or  that  he  gained  less  than 
the  legal  rate  of  interest  would  have  brought  him.  These 
propositions  are  both  in  accordance  with  a  rule  which  ap- 

'  Duffy  v.  Duncan,  35  New  York,  191,  1866  ;  Perry  on  Trusts,  Section  464. 


CHAP.  XXII.]  PROFITS.  511 

applies  to  trustees :  the  rule  which  provides  that  where  a 
trustee  deals  with  the  trust  property  for  his  own  advantage, 
he  may  be  charged  with  his  gains  at  the  option  of  the  cestui 
qui  trusty  or  with  legal  interest,  if  that  would  be  more  bene- 
ficial to  the  equitable  owner  of  the  trust  property.1 

Relevant  to  the  precise  time  when  interest  on  infringers' 
profits  begins  to  run  against  infringers  who  receive  them, 
the  proper  and  equitable  rule  seems  to  be  that  adopted 
by  Justice  BLATCHFORD."  It  computes  the  amount  of  profits 
which  were  derived  by  an  infringer  in  each  year  of  his  in- 
fringement, and  charges  him  with  simple  interest  at  the 
local  legal  rate  on  that  amount,  from  the  end  of  that  year 
till  the  date  of  the  final  decree.  This  rule  gives  the  in- 
fringer an  average  of  half  a  year  in  which  to  invest  those 
profits  before  interest  begins  to  accrue  against  him,  and  it 
Joes  not  assume  that  he  so  invested  them  as  to  derive  com- 
pound interest  therefrom. 

The  last  Supreme  Court  case  which  relates  to  interest  on 
infringers'  profits,3  allowed  such  interest  back  of  the  date 
of  the  final  decree,  as  far  as  the  date  of  the  master's  report, 
thus  disregarding  Silsby  v.  Foote,  Mowry  v.  Whitney, 
Littlefield  v.  Perry,  and  Parks  v.  Booth  on  the  one  hand  ; 
and  also  disregarding  the  Circuit  Court  decisions  of  Justice 
NELSON  and  Justice  BLATCHFORD  on  the  other  hand.  And 
perhaps  this  last  decision  may  be  found  inapplicable  here- 
after, when  a  case  comes  to  the  Supreme  Court  in  which 
the  infringement,  when  it  occurred,  was  an  undeniable  ap- 
propriation of  the  patentee's  property ;  for  nothing  is  rightly 
settled,  till  it  is  settled  right. 

§  739.  The  proceedings  by  which  profits  are  ascertained 
may  now  become  the  theme  of  treatment.  After  an  inter- 
locutory decree  is  entered,  directing  a  master  commissioner 
of  the  court  to  take  and  report  an  account  of  the  defend- 
ant's profits,  or  appointing  a  master  pro  hoc  vice  for  that 


1  Norris's  Appeal,  71  Penn.  State,      17,  1871. 

118,  1872.  8  Tilghman  v.  Proctor,  125  U.  S. 

»  Tilghman  v.  Mitchell,  9  Blatch.      160,  1887. 


542  PROFITS.  [CHAP.  xxn. 

purpose ;  it  becomes  the  business  of  the  complainant 
to  introduce  evidence  before  such  master,  to  prove  the 
amount  of  those  profits.  The  complainant  must  take  the 
initiative.  It  is  not  the  province  of  the  master  to  suggest 
any  specific  line  of  proof,  or  theory  of  accounting.  His 
function  is  to  pass  upon  whatever  evidence  the  complain- 
ant produces,  in  the  light  of  whatever  is  produced  by  the 
defendant.1  And  his  fees  must  be  paid  by  the  defendant 
when  they  accrue,  and  must  be  borne  by  him  in  the  final 
taxation  of  costs,  if  he  is  finally  defeated,2  but  must  be 
borne  by  the  complainant  if  the  bill  is  finally  dismissed.3 

§  740.  The  evidence  upon  which  the  master  may  base  his 
report  may  consist  of  any  evidence  taken  in  the  case  prior 
to  the  interlocutory  decree,4  and  of  documents  introduced 
and  depositions  taken  by  the  parties  for  the  express  purpose 
of  the  accounting,  and  of  testimony  taken  viva  voce  in  the 
presence  of  the  master,5  anywhere  in  the  world,6  and  of 
personal  examination  by  him  of  the  structures  or  processes 
which  are  involved  in  the  questions  before  him.'  If  the  re- 
quired documents  are  not  produced  voluntarily,  the  master 
may  require  their  production  ;  and  any  necessary  deposi- 
tions may  be  taken  upon  commissions  to  be  issued  upon  his 
certificate,  from  the  clerk's  office ;  or  they  may  be  taken 
according  to  the  acts  of  Congress.8  When  testimony  is 
taken  viva  voce  before  a  master,  either  party  may  require 
that  it  be  taken  down  in  writing,  in  order  that,  if  necessary, 
it  may  be  used  by  the  court.9  In  the  course  of  an  account- 
ing before  a  master,  that  officer  has  full  authority  to  do  all 
acts  and  to  direct  all  proceedings  which  he  may  deem  nec- 
essary and  proper  to  the  justice  and  merits  of  the  case.10 

1  Garretsou  v.  Clark,  4  Barm.  &  •  Bate  Refrigerating  Co.  «.   Gil- 
Ard.  537,  1879.  lette,  28  Fed.  Rep.  673,  1886. 

2  Urner  v.  Kaylon,  17  Fed.  Rep.  '  Piper  v.  Brown,  1  Holmes,  198, 
539,  845,  1883.    '  1873. 

3  American  Diamond  Drill  Co.  v.  8  Equity  Rule  77  ;  Revised  Stat- 
Machine  Co.  32  Fed.  Rep.  552, 1885.  utes,  Sections  863,  864,   and  865  ; 

4  Equity  Rule  80;  Bell  v.  Stamp-  Section  535  of  this  book, 
ing  Co.  32  Fed.  Rep.  549,  1887.  •  Equity  Rule  81. 

6  Equity  Rule  77.  I0  Equity  Rule  77. 


CHAP.  XXII.]  PROFITS.  543 

If,  for  example,  an  account  to  be  transcribed  or  deduced 
from  the  defendant's  books,  is  necessary  to  a  just  decision 
of  the  cause,  the  master  may  make  an  order  that  the  de- 
fendant furnish  such  an  account  by  a  certain  day  ;  and 
such  an  order,  when  served  on  the  defendant  by  any  disin- 
terested person,  must  be  obeyed,  or  the  defendant  will  be 
guilty  of  contempt  of  court  for  not  obeying  it.1  Such  is  an 
outline  of  the  prescribed  proceedings  in  accordance  with 
which  evidence  may  be  produced  before  a  master  on  an 
accounting ;  but  the  parties  may  by  stipulation  vary  those 
proceedings  in  many  respects.  It  is  sometimes  customary 
for  counsel,  by  mutual  agreement,  to  take  all  the  testimony 
in  an  accounting,  by  depositions  taken  before  any  person 
duly  authorized  to  administer  the  necessary  oaths,  and  to 
print  the  whole  in  one  or  more  pamphlets  or  books,  and  to 
call  on  the  master  for  no  action  in  the  case  until  the  ques- 
tions involved  are  ready  to  be  argued  before  him  on  the 
evidence  so  printed. 

§  741.  Objections  to  evidence,  in  order  to  be  availing, 
must  be  made  when  the  objectionable  piece  of  evidence  is 
offered,  or  the  objectionable  question  is  put,  or  the  objection- 
able answer  is  given.  If  the  master  is  present  at  the  time, 
he  ought  to  rule  upon  the  objection  at  once,  and  if  either 
party  would  appeal  from  that  ruling,  he  must  enter  an  im- 
mediate objection  thereto.  If  the  ruling  is  against  the  evi- 
dence objected  to,  it  is  necessary  for  the  party  who  offers 
the  evidence,  if  he  would  appeal  from  the  ruling,  to  do  so 
by  an  immediate  motion  to  the  court  to  direct  the  master  to 
reverse  his  decision  upon  the  point.  The  reason  for  this 
practice  is  that  if  such  an  appeal  could  be  taken  in  an  ex- 
ception to  the  master's  report,  it  would,  when  taken  success- 
fully, necessitate  a  recommittal  of  the  case  to  the  master, 
in  order  to  enable  him  to  admit  the  evidence  which  he  er- 
roneously rejected.  If  the  master's  ruling  is  in  favor  of 
the  evidence  objected  to,  that  evidence  will  of  course  be  ad- 
mitted subject  to  the  objection,  and  that  ruling  may  be  re- 

1  Kerosene  Lamp  Heater  Co.  v.  Fisher,  5  Bann.  &  Ard.  79,  1880. 


544:  PKOFITS.  [CHAP.  xxn. 

viewed  by  the  court  on  exceptions  to  the  report  of  the 
master,  as  well  as  by  means  of  an  immediate  motion.  It 
may  be  reviewed  on  exceptions,  because  if  it  is  reversed, 
that  reversal  will  not  necessitate  any  addition  to  the  evi- 
dence before  the  court,  but  will  merely  cause  the  court  to 
eliminate  the  objectionable  evidence  from  among  the  factors 
of  the  problems  before  it. 

If  the  master  is  not  present  when  the  cause  of  an  objec- 
tion arises,  the  practice  is  for  the  notary  or  other  magistrate 
who  is  taking  the  deposition,  to  note  the  objection  thereon, 
and  to  take  down  the  evidence  objected  to ;  for  he  has  no 
authority  to  make  any  ruling.  In  such  cases  the  objections 
which  are  noted  upon  the  depositions,  may  be  brought  to 
the  attention  of  the  master  on  the  argument  before  him,  and 
his  specific  ruling  thereon  may  be  required,  and  those  rulings 
may  be  reviewed  by  the  court,  on  exceptions  to  the  report 
of  the  master,  as  far  as  they  have  affected  that  report. 
Most  of  the  points  stated  in  this  section  are  contained  in  an 
excellent  decision  of  Judge  "W.  D.  SHIPMAN/  and  the  residue 
are  deducible  from  that  decision,  or  from  plain  principles 
of  practice. 

§  742.  The  extent  of  the  defendant's  infringement  must 
be  determined  by  the  master  in  order  to  enable  him  to  as- 
certain the  amount  of  the  profits  which  the  defendant 
derived  from  that  infringement.  Where  the  infringement 
was  all  alike,  or  where  the  interlocutory  decree  specifies 
the  particular  doings  of  the  defendant  which  are  to  be  ac- 
counted for  as  infringements,  the  only  question  for  the 
master  to  decide  on  this  point  is  a  question  of  quantity. 
But  where  the  interlocutory  decree  merely  directs  the 
master  to  take  and  report  an  account  of  the  profits  which 
the  defendant  derived  from  infringing  the  complainant's 
patent,  and  where  the  complainant  claims  that  certain  doings 
of  the  defendant  which  were  not  proved  prior  to  the  inter- 
locutory decree,  constitute  such  an  infringement,  it  becomes 
the  duty  of  the  master  to  decide  the  question  of  infringe- 

1  Troy  Iron  and  Nail  Factory  v.  Corning,  6  Blatch.  333,  1869. 


CHAP.  XXII.]  PROFITS.  545 

ment  involved.1  Nor  would  it  be  unprecedented  for  a  court, 
when  directing  a  master  to  take  and  report  an  account  of 
infringers'  profits,  to  direct  him  also  to  decide  and  report 
which  of  various  machines  used  by  the  defendant  were  in- 
fringements of  the  complainant's  patent,  and  to  make  up 
his  account  accordingly.8  But  the  most  convenient  and 
least  expensive  practice  is  for  the  court  to  decide  all  ques- 
tions of  infringement  before  entering  an  interlocutory 
decree ;  because  masters  are  more  likely  to  decide  such 
questions  erroneously  than  judges  are ;  and  because,  if  a 
master  holds  a  particular  thing  to  be  an  infringement  which 
the  court  holds  to  be  otherwise,  the  time  and  expense  are 
lost  which  were  expended  in  taking  an  account  of  profits 
derived  from  that  particular  article,  unless  the  Supreme 
Court  should  agree  with  the  master  in  opinion  and  reverse 
or  modify  the  decree  in  that  behalf. 

§  743.  Where  the  alleged  infringements  involved  in  a  suit 
are  of  several  sorts,  the  master  generally  ought  to  report 
in  a  separate  item  the  profits  due  to  each  kind ;  so  that  the 
Circuit  Court  on  exceptions,  or  the  Supreme  Court  on  an 
appeal,  may  render  a  decree  for  part  or  for  all  of  those 
items,  according  to  its  decision  upon  the  questions  of  in- 
fringement involved.  This  is  but  a  rule  of  convenience,  and 
may  be  departed  from  when  convenience  would  thus  be 
better  served.  Where  the  defendant  used  two  different 
sorts  of  machines,  both  of  which  the  complainant  claims 
infringe  his  patent,  if  the  points  upon  which  those  questions 
of  infringement  depend  are  apparently  the  same  in  both 
cases,  and  if  the  two  sorts  of  machines  were  so  used  by 
the  defendant,  that  it  would  be  difficult  to  separate  the 
profits  derived  from  the  use  of  one  from  those  flowing  from 
the  use  of  the  other,  it  will  be  most  convenient  not  to  at- 
tempt to  do  so.  In  such  a  case  there  is  but  little  probabil- 
ity that  the  courts  will  hold  one  of  the  two  sorts  of  machines 
to  infringe,  while  holding  that  the  other  does  not,  and  there 

1  Knox  v.  Quicksilver  Mining  Co.         *  Cawood  Patent,  94  U.  S.  708, 
6  Sawyer,  436,  1878.  1876. 


546  PROFITS.  [CHAP.  xxn. 

is  correspondingly  little  probability  that  a  necessity  will 
arise  for  a  division  of  the  profits  due  to  the  use  of  the  two 
kinds. 

§  744.  A  draft  report  of  a  master  in  chancery,  is  one 
which  the-  master  draws  up  after  the  testimony  has  all  been , 
taken,  and  the  parties  have  been  heard  in  argument  on  that 
testimony,  and  the  master  has  formed  an  opinion  on  the 
questions  involved  in  the  reference  before  him.  Such  a 
report  is  requisite  to  enable  the  parties  to  correct  any  mis- 
apprehension into  which  the  master  may  have  fallen,  with- 
out the  alternative  necessity  of  presenting  the  point  to  the 
court.  When  completed,  such  a  report  is  either  filed  in  the 
case,  or  served  on  the  parties  or  their  solicitors ;  and  it 
thereupon  devolves  upon  any  party  who  is  dissatisfied  with 
the  master's  finding  to  file  such  exceptions  to  his  draft 
report,  as  will  call  his  attention  to  each  alleged  error  of 
which  the  dissatisfied  party  proposes  to  complain.1  It  then 
becomes  the  duty  of  the  master  to  consider  or  reconsider 
the  questions  involved  in  those  exceptions,  and  thereupon 
to  prepare  and  file  his  final  report  in  the  case.  The  latter 
will  be  identical  with  the  draft  report  if  the  consideration 
of  the  exceptions  to  the  earlier  document  fails  to  convince 
the  master  that  it  was  wrong ;  but  if  he  is  so  convinced,  he 
will  concert  his  final  report  in  such  a  manner  as  to  make  it 
embody  his  changed  opinion.8  No  new  evidence  can  be  in- 
troduced before  a  master  after  he  has  made  his  draft  report ; * 
the  proceedings  upon  exceptions  thereto,  being  merely  in 
the  nature  of  a  rehearing  for  errors  apparent  on  the  face  of 
the  record.  According  to  strict  equity  practice,  it  is  neces- 
sary to  give  a  master  this  opportunity  to  correct  his  findings, 
in  order  to  save  time  and  labor  of  the  judge.4  But  this 
strict  practice  has  often  been  omitted  by  counsel  in  patent 


1  Fischer  e.  Hayes,  16  Fed  Rep.  Blatch.  332,  1869. 

469,  1883.  3  Piper  v.  Brown,  1  Holmes,  196, 

8  Sugar  Refinery  Co.  v.  Mathies-  1873. 

son,  3  Clif.  149,  1868;    Troy  Iron  4  Story  v.  Livingston,  13  Peters, 

and  Nail    Factory    v.    Corning,    6  366,  1839. 


CHAP.  XXII.]  PROFITS.  547 

cases,  and  its  omission  been  condoned  by  opposing  counsel 
or  by  the  court.1  But  it  is  not  safe  to  omit  the  filing  of 
such  exceptions  with  the  master,  for  the  rule  which  requires 
them  is  always  liable  to  be  enforced,  and  the  enforcement 
consists  in  the  court  disregarding  every  exception  to  a 
master's  final  report,  which  was  not  taken  before  the  master 
himself,  by  way  of  exceptions  to  his  draft  report.1 

§  745.  Exceptions  to  masters'  reports  ought  to  be  aimed 
with  precision  at  the  errors  which  such  reports  are  alleged 
to  contain.  Such  exceptions  may  be  filed  by  the  com- 
plainant if  he  thinks  that  the  master  has  erred  in  not  find- 
ing any  profits,  or  in  not  finding  any  damages,  or  in  finding 
either  of  those  foundations  of  recovery  to  have  been  smaller 
than  the  evidence  would  warrant ;  and  such  exceptions  may 
be  filed  by  the  defendant,  if  he  thinks  that  the  master  erred 
in  finding  profits  or  in  finding  damages  to  an  amount  in  ex- 
cess of  what  the  evidence  can  sustain. 

§  746.  Defendants'  exceptions  to  masters'  reports  are 
divisible  into  four  classes.  1.  Exceptions  which  state  that 
there  is  evidence  in  the  case,  proving  that  the  defendant 
derived  no  profit,  and  that  the  complainant  sustained  no 
damage,  on  account  of  the  infringement.  2.  Exceptions 
which  state  that  there  is  evidence  in  the  case  proving  that 
the  master's  finding  of  profits  or  of  damages  is  too  large 
in  amount.  3.  Exceptions  which  deny  that  there  is  any 
admissible  evidence  in  the  case  proving  that  the  defendant 
derived  profit,  or  that  the  complainant  sustained  damage, 
on  account  of  the  infringement.  4.  Exceptions  which  deny 
that  there  is  any  admissible  evidence  in  the  case  proving 
that  the  defendant  derived  profit,  or  that  the  complainant 
sustained  damage,  on  account  of  the  infringement,  to  so 
great  an  amount  as  the  master  reported. 

The  first  two  of  these  classes  of  exceptions  rely  upon 
affirmations,  and  the  last  two  rely  upon  negations,  of  defi- 


1  Fischer  ».  Hayes,  16  Fed.  Rep.  *  McMickin  v.  Perin,  18  Howard, 
469,  1883;  Jennings  v.  Dolan,  29  510,  1855;  Troy  Iron  and  Nail  Fac- 
Fed.  Rep.  861,  1887.  tory  ».  Corning,  6  Blatch.  333, 1869. 


548  PKOFITS.  [CHAP.  xxn. 

nite  points  of  fact.  For  the  purposes  of  the  present  ex- 
planation the  four  classes  may  be  treated  in  two  groups : 
those  which  are  affirmative  requiring  one  sort  of  manage- 
ment in  practice,  and  those  which  are  negative  requiring 
another. 

§  747.  Defendants'  affirmative  exceptions  to  a  draft  re- 
port, must  specify  the  particular  evidence  upon  which  they 
are  respectively  based.  If  this  rule  were  otherwise,  such 
an  exception  would  not  point  out  error,  and  would  there- 
fore fail  to  perform  its  only  function.  Defendants'  affirm- 
ative exceptions  to  a  final  report  must  be  supported  by 
reference  to  the  particular  evidence  upon  which  the  excep- 
tor  relies ;  or  by  such  special  statements  of  the  master,  as 
justify  the  exceptor  in  affirming  the  existence  of  the  par- 
ticular facts  upon  which  he  relies  to  support  such  excep- 
tions. Were  the  court  required  to  wander  at  large  into  the 
evidence  which  was  before  the  master,  the  reference  to  him 
would  be  of  little  value.  Indeed  that  evidence  need  not  be 
reported  further  than  it  is  relied  upon  to  support,  explain, 
or  oppose  a  particular  exception.1 

§  748.  Defendants'  negative  exceptions  are  those  which 
call  in  question  the  admissibility  of  the  evidence  upon  which 
the  master  based  his  finding,  and  those  which  deny  the 
presence  in  the  record  of  any  evidence  sufficient  to  support 
that  conclusion.  An  exception  of  the  first  of  these  sorts,  so 
far  partakes  of  the  nature  of  an  affirmative  exception,  that 
it  ought  to  specify  the  particular  evidence  objected  to,  so 
that  the  master,  on  exceptions  to  his  draft  report,  or  the 
court,  on  exceptions  to  the  final  report  of  the  master,  may 
have  a  precise  issue  in  the  law  of  evidence  presented  for 
decision.  But  an  exception  of  the  second  of  these  kinds 
cannot  be  expected  to  specify  any  particular  evidence,  be- 
cause it  assumes  that  there  is  none  in  the  record.  In 
such  a  case,  the  proper  practice  is  for  the  exceptor  to  re- 
quire the  master  to  make  a  special  statement,  in  his  final 
report,  of  the  particular  evidence  which  convinced  his  judg- 

1  Harding  v.  Handy,  11  Wheaton,  126,  1826. 


CHAP.  XXII.]  PROFITS.  549 

ment,  and  to  transmit  that  evidence  with  his  report  into 
court.1 

§  749.  Complainants'  exceptions  to  a  master's  report  may 
be  of  two  classes.  1.  Exceptions  which  state  that  there  is 
evidence  in  the  case  proving  that  the  defendant  derived 
larger  profits,  and  that  the  complainant  sustained  larger 
damages  than  the  master  reported.  2.  Exceptions  which 
state  that  the  master  erred  in  admitting  inadmissible  evi- 
dence. Both  of  these  sorts  are  affirmative  in  their  nature, 
and  when  made  to  a  draft  report,  must  therefore  be  sup- 
ported by  references  to  the  particular  evidence  upon  which 
the  exceptor  relies,  or  by  reference  to  the  particular  evi- 
dence which  he  claims  was  improperly  admitted  against 
his  objection,  as  the  case  may  happen  to  require.  When 
made  to  a  final  report,  a  complainant's  exceptions,  like  the 
affirmative  exceptions  of  a  defendant,  must  be  supported 
either  by  references  to  the  particular  evidence  involved,  or 
be  based  upon  such  special  statements  of  the  master  as  will 
obviate  that  necessity. 

§  750.  The  system  of  practice  relevant  to  a  master's  find- 
ing, appears  to  present  the  following  outlines  when  reviewed 
as  a  whole.  It  is  a  master's  function  to  investigate  the 
questions  which  are  referred  to  him  by  the  court,  and  to 
investigate  no  others.  To  that  end,  he  takes  testimony  and 
receives  other  evidence,  and  decides  what  conclusions  are 
justified  thereby  ;  and  those  conclusions  will  stand  unless 
they  are  clearly  erroneous."  Unless  the  court  otherwise 
directs,  the  master's  draft  report  should  contain  those  con- 
clusions alone  ;  and  his  final  report  should  contain  only  his 
final  conclusions,  together  with  such*  statements  of  fact,  and 
statements  and  pieces  of  evidence,  as  the  parties  lawfully 
require  him  to  attach  thereto.  "Where  the  exceptions  to 
the  draft  report  involve  no  issues  save  such  as  pertain  to 


1  In  re  Hemiup,  3  Paige  (N.  Y.),  »  Tilghman  v.  Proctor,  125  U.  S. 

307,  1832;  Greene  «.  Bishop,  1  Clif.  149,  1887;   Callaghan  t>.  Myers,  128 

195,     1858;     The    Commander-in-  U.  S.  666,  1888;  Welling  t>.  La  Ban, 

Chief,  1  Wallace,  50,  1863.  32  Fed.  Rep.  293,  1888. 


550  PROFITS.  [CHAP.  xxn. 

the  admissibility  of  particular  evidence,  nothing  need  ac- 
company the  final  report  except  the  evidence  objected  to, 
and  a  statement  of  the  ground  upon  which  it  was  admitted. 
Where  those  exceptions  merely  affirm  the  presence  of  evi- 
dence requiring  a  different  conclusion  from  that  of  the 
master,  nothing  need  accompany  the  final  report  save  the 
particular  evidence  which  those  exceptions  specify  in  that 
behalf.  Where  those  exceptions  merely  deny  the  presence 
of  evidence  to  justify  the  draft  report,  nothing  need  accom- 
pany the  final  report  save  the  evidence  which  carried  the 
master  to  the  conclusion  at  which  he  arrived.  Where  a 
master  receives  no  direction  from  the  court,  and  no  request 
from  either  of  the  parties,  to  report  any  evidence,  his  re- 
port contains  nothing  but  his  finding,  and  his  finding  is 
conclusive.1 

1  Harding  v.  Handy,  11  Wheaton,  (Mass.),  222, 1851;  Howe  v.  Russell, 

126,     1826;     The    Commander-in-  36  Maine,  127,  1853 ;    Sparhawk  v. 

Chief,   1   Wallace,  50,  1863;   In  re  Wills,   5  Gray    (Mass.),  431,  1855; 

Hemiup,  3  Paige  (N.  Y.),  307,  1832;  Greene  v.  Bishop,  1  Clif.  195, 1858; 

Dexter  ».  Arnold,  2  Sumner,  131,  Mason  v.  Railroad  Co.    52  Maine, 

1834;   Donuell  v.   Insurance  Co.  2  115,  1861;  Piper®.  Brown,  1  Holmes, 

Sumner,    371,    1836;    Boston    Iron  198, 1873;  Hammacher  ®.  Wilson,  32 

Co.  v.  King,  2  Gushing  (Mass.),  405,  Fed.  Rep.  797,  1887. 
1848;  Adams  v.  Brown,  7  Cushing 


APPENDIX. 


THE  PATENT  STATUTES. 


PATENT    ACT    OF    1790. 

1  STATUTES  AT  LARGE,  109. 

An  Act  to  promote  the  progress  of  useful  Arts. 

SECTION  1.  Be  it  enacted  by  the  Senate  and  House  of  Rep- 
resentatives of  the  United  States  of  America  in  Congress 
assembled^  That  upon  the  petition  of  any  person  or  persons  to 
the  Secretary  of  State,  the  Secretary  for  the  Department  of 
War,  and  the  Attorney- General  of  the  United  States,  setting 
forth  that  he,  she,  or  they  hath  or  have  invented  or  discovered 
any  useful  art,  manufacture,  engine,  machine,  or  device,  or  any 
improvement  therein  not  before  known  or  used,  and  praying 
that  a  patent  may  be  granted  therefor,  it  shall  and  may  be 
lawful  to  and  for  the  said  Secretary  of  State,  the  Secretary  for 
the  Department  of  War,  and  the  Attorney- General,  or  any  two 
of  them,  if  they  shall  deem  the  invention  or  discovery  suffi- 
ciently useful  and  important,  to  cause  letters-patent  to  be  made 
out  in  the  name  of  the  United  States,  to  bear  teste  by  the  Pres- 
ident of  the  United  States,  reciting  the  allegations  and  sug- 
gestions of  the  said  petition,  and  describing  the  said  invention 
or  discovery,  clearly,  truly,  and  fully,  and  thereupon  granting 
to  such  petitioner  or  petitioners,  his,  her,  or  their  heirs,  ad- 
ministrators, or  assigns,  for  any  term  not  exceeding  fourteen 
years,  the  sole  and  exclusive  right  and  liberty  of  making, 
constructing,  using,  and  vending  to  others  to  be  used,  the  said 
invention  or  discovery  ;  which  letters -patent  shall  be  delivered 
to  the  Attorney-General  of  the  United  States  to  be  examined, 


554  THE   PATENT    STATUTES. 

who  shall,  within  fifteen  days  next  after  the  delivery  to  him,  if 
he  shall  find  the  same  conformable  to  this  act,  certify  it  to  be 
so  at  the  foot  thereof,  and  present  the  letters-patent  so  certified 
to  the  President,  who  shall  cause  the  seal  of  the  United  States 
to  be  thereto  affixed,  and  the  same  shall  be  good  and  available 
to  the  grantee  or  grantees  by  force  of  this  act,  to  all  and 
every  intent  and  purpose  herein  contained,  and  shall  be  re- 
corded in  a  book  to  be  kept  for  that  purpose  in  the  office  of 
the  Secretary  of  State,  and  delivered  to  the  patentee  or  his 
agent,  and  the  delivery  thereof  shall  be  entered  on  the  record 
and  indorsed  on  the  patent  by  the  said  Secretary  at  the  time  of 
granting  the  same. 

SECTION  2.  And  be  it  further  enacted,  That  the  grantee  or 
grantees  of  each  patent  shall,  at  the  time  of  granting  the 
same,  deliver  to  the  Secretary  of  State  a  specification  in  writing, 
containing  a  description,  accompanied  with  drafts  or  models, 
and  explanations  and  models  (if  the  nature  of  the  invention  or 
discovery  will  admit  of  a  model),  of  the  thing  or  things  by  him 
or  them  invented  or  discovered,  and  described  as  aforesaid,  in 
the  said  patents  ;  which  specification  shall  be  so  particular, 
and  said  models  so  exact,  as  not  only  to  distinguish  the  inven- 
tion or  discovery  from  other  things  before  known  and  used, 
but  also  to  enable  a  workman  or  other  person  skilled  in  the  art  of- 
manufacture,  whereof  it  is  a  branch,  or  wherewith  it  may  be 
nearest  connected,  to  make,  construct,  or  use  the  same,  to  the 
end  that  the  public  may  have  the  full  benefit  thereof,  after  the 
expiration  of  the  patent  term  ;  which  specifications  shall  be 
filed  in  the  office  of  the  said  Secretary,  and  certified  copies 
thereof  shall  be  competent  evidence  in  all  courts  and  before 
all  jurisdictions,  where  any  matter  or  thing,  touching  or  con- 
cerning such  patent,  right,  or  privilege  shall  come  in  question. 

SECTION  3.  A.nd  be  it  further  enacted,  That  upon  the  ap- 
plication of  any  person  to  the  Secretary  of  State,  for  a  copy  of 
any  such  specification,  and  for  permission  to  have  similar  model 
or  models  made,  it  shall  be  the  duty  of  the  Secretary  to  give 
such  a  copy,  and  to  permit  the  person  so  applying  for  a  similar 
model  or  models,  to  take,  or  make,  or  cause  the  same  to  be  taken 
or  made,  at  the  expense  of  such  applicant. 


THE  PATENT  ACT  OF  1790.  555 

SECTION  4.  And  be  it  further  enacted,  That  if  any  person  or 
persons  shall  devise,  make,  construct,  use,  employ,  or  vend, 
within  these  United  States,  any  art,  manufacture,  engine, 
machine,  or  devico,  or  any  invention  or  improvement  upon,  or 
in  any  art,  manufacture,  engine,  machine,  or  device,  the  sole 
and  exclusive  right  of  which  shall  be  so  as  aforesaid  granted 
by  patent  to  any  person  or  persons,  by  virtue  and  in  pursuance 
of  this  act,  without  the  consent  of  the  patentee  or  patentees, 
their  executors,  administrators,  or  assigns,  first  had  and  ob- 
tained in  writing,  every  person  so  offending  shall  forfeit  and 
pay  to  the  said  patentee  or  patentees,  his,  her,  or  their  execu- 
tors, administrators,  or  assigns,  such  damages  as  shall  be 
assessed  by  a  jury,  and  moreover  shall  forfeit  to  the  person  ag- 
grieved, the  thing  or  things  so  devised,  made,  constructed,  used, 
employed,  or  vended,  contrary  to  the  true  intent  of  this  act, 
which  may  be  recovered  in  an  action  on  the  case  founded  on 
this  act. 

SECTION  5.  And  be  it  further  enacted.  That  upon  oath  or 
affirmation  made  before  the  judge  of  the  district  court  where 
the  defendant  resides,  that  any  patent  which  shall  be  issued  in 
pursuance  of  this  act,  was  obtained  surreptitiously  by,  or  upon 
false  suggestion,  and  motion  made  to  the  said  court,  within  one 
year  after  issuing  the  said  patent,  but  not  afterwards,  it  shall 
and  may  be  lawful  to  and  for  the  judge  of  the  said  district 
court,  if  the  matter  alleged  shall  appear  to  him  to  be  sufficient, 
to  grant  a  rule  that  the  patentee  or  patentees,  his,  her,  or  their 
executors,  administrators,  or  assigns,  show  cause  why  process 
should  not  issue  against  him,  her,  or  them,  to  repeal  such 
patents  ;  and  if  sufficient  cause  shall  not  be  shown  to  the  con- 
trary, the  rule  shall  be  made  absolute,  and  thereupon  the  said 
judge  shall  order  process  to  be  issued  as  aforesaid,  against  such 
patentee  or  patentees,  his,  her,  or  their  executors,  administra- 
tors, or  assigns.  And  in  case  no  sufficient  cause  shall  be  shown 
to  the  contrary,  or  if  it  shall  appear  that  the  patentee  was  not 
the  first  and  true  inventor  or  discoverer,  judgment  shall  be 
rendered  by  such  court  for  the  repeal  of  such  patent  or  patents  ; 
and  if  the  party  at  whose  complaint  the  process  issued  shall 
have  judgment  given  against  him,  he  shall  pay  all  such  costs 


556  THE   PATENT   STATUTES. 

as  the  defendant  shall  be  put  to  in  defending  the  suit,  to  be 
taxed  by  the  court,  and  recovered  in  such  manner  as  costs  ex- 
pended by  defendants  shall  be  recovered  in  due  course  of  law. 

SECTION  6.  And  be  it  further  enacted.  That  in  all  actions  to 
be  brought  by  such  patentee  or  patentees,  his,  her,  or  their  ex- 
ecutors, administrators,  or  assigns,  for  any  penalty  incurred  by 
virtue  of  this  act,  the  said  patents  or  specifications  shall  be 
primd  facie  evidence  that  the  said  patentee  or  patentees  was 
or  were  the  first  and  true  inventor  or  inventors,  discoverer  or 
discoverers,  of  the  things  so  specified,  and  that  the  same  is  truly 
specified  ;  but  that  nevertheless  the  defendant  or  defendants 
may  plead  the  general  issue,  and  give  this  act,  and  any  special 
matter  whereof  notice  in  writing  shall  have  been  given  to  the 
plaintiff,  or  his  attorney,  thirty  days  before  the  trial,  in  evi- 
dence tending  to  prove  that  the  specification  filed  by  the 
plaintiff  does  not  contain  the  whole  of  the  truth  concerning  his 
invention  or  discovery  ;  or  that  it  contains  more  than  is  neces- 
sary to  produce  the  effect  described  ;  and  if  the  concealment 
of  part,  or  the  addition  of  more  than  is  necessary,  shall  appear 
to  have  been  intended  to  mislead,  or  shall  actually  mislead  the 
public,  so  as  the  effect  described  .cannot  be  produced  by  the 
means  specified,  then,  and  in  such  cases,  the  verdict  and  judg- 
ment shall  be  for  the  defendant. 

SECTION  7.  And  be  it  further  enacted,  That  such  patentee 
as  aforesaid  shall,  before  he  receives  his  patent,  pay  the  fol- 
lowing fees  to  the  several  officers  employed  in  making  out 
and  perfecting  the  same,  to  wit :  For  receiving  and  filing  the 
petition,  fifty  cents  ;  for  filing  specifications,  per  copy-sheet 
containing  one  hundred  words,  ten  cents  ;  for  making  out 
patent,  two  dollars  ;  for  affixing  great  seal,  one  dollar  ;  for 
indorsing  the  day  of  delivering  the  same  to  the  patentee,  in- 
cluding all  intermediate  services,  twenty  cents, 

APPROVED  April  10,  1790. 

Repealed  February  21,  1793,  1  Statutes  at  Large,  Chap. 
11,  Section  12,  p.  323. 


PATENT  ACT  OF   1793. 
1  STATUTES  AT  LARGE,  318. 

An  Act  to  promote  the  progress  of  useful  Arts  ;  and  to  repeal 
the  act  heretofore  made  for  that  purpose. 

SECTION  1.  Ee  it  enacted  by  the  Senate  and  House  of  Rep- 
resentatives of  the  United  States  of  America  in  Congress  as- 
sembled, That  when  any  person  or  persons,  being  a  citizen  or 
citizens  of  the  United  States,  shall  allege  that  he  or  they  have 
invented  any  new  and  useful  art,  machine,  manufacture,  or 
composition  of  matter,  or  any  new  and  useful  improvement  on 
any  art,  machine,  manufacture,  or  composition  of  matter,  not 
known  or  used  before  the  application,  and  shall  present  a  peti- 
tion to  the  Secretary  of  State,  signifying  a  desire  of  obtaining 
an  exclusive  property  in  the  same,  and  praying  that  a  patent 
may  be  granted  therefor,  it  shall  and  may  be  lawful  for  the 
said  Secretary  of  State  to  cause  letters-patent  to  be  made  out 
in  the  name  of  the  United  States,  bearing  teste  by  the  Presi- 
dent of  the  United  States,  reciting  the  allegations  and  sugges- 
tions of  the  said  petition,  and  giving  a  short  description  of  the 
said  invention  or  discovery,  and  thereupon  granting  to  such 
petitioner  or  petitioners,  his,  her,  or  their  heirs,  administrators, 
or  assigns,  for  a  term  not  exceeding  fourteen  years,  the  full 
and  exclusive  right  and  liberty  of  making,  constructing,  using, 
and  vending  to  others  to  be  used,  the  said  invention  or  discovery, 
which  letters-patent  shall  be  delivered  to  the  Attorney-General 
of  the  United  States,  to  be  examined  ;  who,  within  fifteen  days 
after  such  delivery,  if  he  finds  the  same  conformable  to  this 
act,  shall  certify  accordingly,  at  the  foot  thereof,  and  return 
the  same  to  the  Secretary  of  State,  who  shall  present  the  letters- 
patent,  thus  certified,  to  be  signed,  and  shall  cause  the  seal  of 
the  United  States  to  be  thereto  affixed  ;  and  the  same  shall  be 
good  and  available  to  the  grantee  or  grantees,  by  force  of  this 
act,  and  shall  be  recorded  in  a  book,  to  be  kept  for  that  pur- 
pose, in  the  office  of  the  Secretary  of  State,  and  delivered 
to  the  patentee  or  his  order. 

SECTION  2.  Provided  always,  and  be  it  further  enacted,  That 
any  person  who  shall  have  discovered  an  improvement  in  the 


558  THE    PATENT    STATUTES. 

principle  of  any  machine,  or  in  the  process  of  any  composition 
of  matter,  which  shall  have  been  patented,  and  shall  have  ob- 
tained a  patent  for  such  improvement,  he  shall  not  be  at  liberty 
to  make,  use,  or  vend  the  original  discovery,  nor  shall  the  first 
inventor  be  at  liberty  to  use  the  improvement  :  And  it  is  here- 
by enacted  and  declared,  that  simply  changing  the  form  or  the 
proportions  of  any  machine,  or  composition  of  matter,  in  any 
degree,  shall  not  be  deemed  a  discovery. 

SECTION  3.  And  he  it  further  enacted.  That  every  inventor, 
before  he  can  receive  a  patent,  shall  swear  or  affirm,  that  he 
does  verily  believe  that  he  is  the  true  inventor  or  discoverer 
of  the  art,  machine,  or  improvement  for  which  he  solicits  a 
patent,  which  oath  or  affirmation  may  be  made  before  any  per- 
son authorized  to  administer  oaths,  and  shall  deliver  a  written 
description  of  his  invention,  and  of  the  manner  of  using,  or 
process  of  compounding  the  same,  in  such  full,  clear,  and  ex- 
act terms,  as  to  distinguish  the  same  from  all  other  things 
before  known,  and  to  enable  any  person  skilled  in  the  art  or 
science  of  which  it  is  a  branch,  or  with  which  it  is  most  nearly 
connected,  to  make,  compound,  and  use  the  same.  And  in  the 
case  of  any  machine,  he  shall  fully  explain  the  principle,  and  the 
several  modes  in  which  he  has  contemplated  the  application  of 
that. principle  or  character,  by  which  it  may  be  distinguished- 
from  other  inventions  ;  and  he  shall  accompany  the  whole  with 
drawings  and  written  references,  where  the  nature  of  the  case 
admits  of  drawings,  or  with  specimens  of  the  ingredients,  and 
of  the  composition  of  matter,  sufficient  in  quantity  for  the  pur- 
pose of  experiment,  where  the  invention  is  of  a  composition  of 
matter  ;  which  description,  signed  by  himself,  and  attested  by 
two  witnesses,  shall  be  filed  in  the  office  of  the  Secretary  of 
State,  and  certified  copies  thereof  shall  be  competent  evidence 
in  all  courts,  where  any  matter  or  thing,  touching  such  patent 
right  shall  come  in  question.  And  such  inventor  shall,  more- 
over, deliver  a  model  of  his  machine,  provided  the  Secretary 
shall  deem  such  model  to  be  necessary. 

SECTION  4.  And  ~be  it  further  enacted,  That  it  shall  be  law- 
ful for  any  inventor,  his  executor  or  administrator,  to  assign 
the  title  and  interest  in  the  said  invention,  at  any  time,  and 


THE  PATENT  ACT  OF  1793.  559 

the  assignee,  having  recorded  the  said  assignment  in  the  office 
of  the  Secretary  of  State,  shall  thereafter  stand  in  the  place  of 
the  original  inventor,  both  as  to  right  and  responsibility,  and 
so  the  assignees  of  assigns,  to  any  degree. 

SECTION  5.  And  be  it  further  enacted,  That  if  any  person 
shall  make,  devise,  and  use,  or  sell  the  thing  so  invented,  the 
exclusive  right  of  which  shall,  as  aforesaid,  have  been  secured 
to  any  person  by  patent,  without  the  consent  of  the  patentee, 
his  executors,  administrators,  or  assigns,  first  obtained  in  writ- 
ing, every  person  so  offending  shall  forfeit  and  pay  to  the  pat- 
entee a  sum  that  shall  be  at  least  equal  to  three  times  the  price 
for  which  the  patentee  has  usually  sold  or  licensed,  to  other 
persons,  the  use  of  the  said  invention,  which  may  be  recovered 
in  an  action  on  the  case  founded  on  this  act,  in  the  circuit 
court  of  the  United  States,  or  any  other  court  having  compe- 
tent jurisdiction. 

SECTION  6.  Provided  always,  and  be  it  further  enacted, 
That  the  defendant  in  such  action  shall  be  permitted  to  plead 
the  general  issue,  and  give  this  act,  and  any  special  matter,  of 
which  notice  in  writing  may  have  been  given  to  the  plaintiff 
or  his  attorney,  thirty  days  before  trial,  in  evidence,  tending 
to  prove  that  the  specification  filed  by  the  plaintiff  does  not 
contain  the  whole  truth  relative  to  his  discovery,  or  that  it 
contains  more  than  is  necessary  to  produce  the  described  effect, 
which  concealment  or  addition  shall  fully  appear  to  have  been 
made  for  the  purpose  of  deceiving  the  public,  or  that  the  thing 
thus  secured  by  patent  was  not  originally  discovered  by  the 
patentee,  but  had  been  in  use,  or  had  been  described  in  some 
public  work  anterior  to  the  supposed  discovery  of  the  patentee, 
or  that  he  had  surreptitiously  obtained  a  patent  for  the  discov- 
ery of  another  person  ;  in  either  of  which  cases  judgment  shall 
be  rendered  for  the  defendant,  with  costs,  and  the  patent  shall 
be  declared  void. 

SECTION  7.  And  be  it  further  enacted,  That  where  any 
State,  before  its  adoption  of  the  present  form  of  government, 
shall  have  granted  an  exclusive  right  to  any  invention,  the 
party  claiming  that  right  shall  not  be  capable  of  obtaining  an 
exclusive  right  under  this  act,  but  on  relinquishing  his  right 


560  THE   PATENT    STATUTES. 

under  such  particular  State,  and  of  such  relinquishment,  his 
obtaining  an  exclusive  right  under  this  act  shall  be  sufficient 
evidence. 

SECTION  8.  And  be  it  further  enacted,  That  the  persons 
whose  applications  for  patents  were,  at  the  time  of  passing  this 
act,  depending  before  the  Secretary  of  State,  Secretary  at  War, 
and  Attorney- General,  according  to  the  act  passed  the  second 
session  of  the  first  Congress,  entituled  "  An  act  to  promote  the 
progress  of  useful  arts,"  on  complying  with  the  conditions  of 
this  act,  and  paying  the  fees  herein  required,  may  pursue  their 
respective  claims  to  a  patent  under  the  same. 

SECTION  9.  And  be  it  further  enacted,  That  in  case  of  inter- 
fering applications,  the  same  shall  be  submitted  to  the  arbitra- 
tion of  three  persons,  one  of  whom  shall  be  chosen  by  each  of 
the  applicants,  and  the  third  person  shall  be  appointed  by  the 
Secretary  of  State  ;  and  the  decision  or  award  of  such  arbitra- 
tors, delivered  to  the  Secretary  of  State  in  writing,  and  sub- 
scribed by  them,  or  any  two  of  them,  shall  be  final,  as  far  as 
respects  the  granting  of  the  patent.  And  if  either  of  the  ap- 
plicants shall  refuse  or  fail  to  chuse  an  arbitrator,  the  patent 
shall  issue  to  the  opposite  party.  And  where  there  shall  be 
more  than  two  interfering  applications,  and  the  parties  apply- 
ing shall  not  all  unite  in  appointing  three  arbitrators,  it  shall 
be  in  the  power  of  the  Secretary  of  State  to  appoint  three  ar- 
bitrators for  the  purpose. 

SECTION  10.  And  be  it  further  enacted,  That  upon  oath  or 
affirmation  being  made  before  the  judge  of  the  district  court 
where  the  patentee,  his  executors,  administrators,  or  assigns, 
reside,  that  any  patent,  which  shall  be  issued  in  pursuance  of 
this  act,  was  obtained  surreptitiously,  or  upon  false  suggestion, 
and  motion  made  to  the  said  court,  within  three  years  after  is- 
suing the  said  patent,  but  not  afterward,  it  shall  and  may 
be  lawful  for  the  judge  of  the  said  district  court,  if  the  mat- 
ter alleged  shall  appear  to  him  to  be  sufficient,  to  grant  a  rule, 
that  the  patentee,  or  his  executor,  administrator,  or  assign  show 
cause  why  process  should  not  issue  against  him  to  repeal  such 
patent.  And  if  sufficient  cause  shall  not  be  shown  to  the  con- 


THE  PATENT  ACT  OF  1793.  561 

trary,  the  rule  shall  be  made  absolute,  and  thereupon  the  eaid 
judge  shall  order  process  to  be  issued  against  such  patentee,  or 
his  executors,  administrators,  or  assigns,  with  costs  of  suit. 
And  in  case  no  sufficient  cause  shall  be  shown  to  the  contrary, 
or  if  it  shall  appear  that  the  patentee  was  not  the  true  inventor 
or  discoverer,  judgment  shall  be  rendered  by  such  court  for 
the  repeal  of  such  patent  ;  and  if  the  party,  at  whose  complaint 
the  process  issued,  shall  have  judgment  given  against  him,  he 
shall  pay  all  such  costs  as  the  defendant  shall  be  put  to  in  de- 
fending the  suit,  to  be  taxed  by  the  court,  and  recovered  in  due 
course  of  law. 

SECTION  11.  And  he  it  further  enacted,  That  every  inventor, 
before  he  presents  his  petition  to  the  Secretary  of  State,  signi- 
fying his  desire  of  obtaining  a  patent,  shall  pay  into  the  treas- 
ury thirty  dollars,  for  which  he  shall  take  duplicate  receipts  ;  one 
of  which  receipts  he  shall  deliver  to  the  Secretary  of  State, 
when  he  presents  his  petition  ;  and  the  money  thus  paid  shall 
be  in  full  for  the  sundry  services  to  be  performed  in  the  office 
of  the  Secretary  of  State,  consequent  on  such  petition,  and 
shall  pass  to  the  account  of  clerk-hire  in  that  office  :  Provided 
nevertheless,  That  for  every  copy,  which  may  be  required  at 
the  said  office,  of  any  paper  respecting  any  patent  that  has 
been  granted,  the  person  obtaining  such  copy  shall  pay,  at  the 
rate  of  twenty  cents,  for  every  copy-sheet  of  one  hundred 
words,  and  for  every  copy  of  a  drawing,  the  party  obtaining 
the  same,  shall  pay  two  dollars,  of  which  payments  an  account 
shall  be  rendered,  annually,  to  the  treasury  of  the  United 
States,  and  they  shall  also  pass  to  the  account  of  clerk-hire  in 
the  office  of  the  Secretary  of  State. 

SECTION  12.  And  le  it  further  enacted,  That  the  act  passed 
the  tenth  day  of  April,  in  the  year  one  thousand  seven  hun- 
dred and  ninety,  intituled  "  An  act  to  promote  the  progress 
of  useful  arts,' '  be,  and  the  same  is  hereby,  repealed  :  Provided 
always,  That  nothing  contained  in  this  act  shall  be  construed 
to  invalidate  any  patent  that  may  have  been  granted  under  the 
authority  of  the  said  act ;  and  all  patentees  under  the  said  act, 
their  executors,  administrators,  and  assigns,  shall  be  considered 


562  THE    PATENT    STATUTES. 

within  the  purview  of  this  act,  in  respect  to  the  violation  of 
their  rights  :  provided  such  violations  shall  be  committed  after 
the  passing  of  this  act. 

APPROVED  February  21,  1793. 

Eepealed  July  4,  1836.  5  Statutes  at  Large,  Chap.  357, 
Section  21,  p.  125. 


PATENT   ACT   OF   1794. 
1  STATUTES  AT  LARGE,  393. 

An  Act  supplementary  to  the  act  intituled  "  An  act  to  pro- 
mote the  progress  of  Useful  Arts. ' ' 

Be  it  enacted  ty  the  Senate  and  House  of  Representatives 
of  the  United  States  of  America  in  Congress  assembled,  That 
all  suits,  actions,  process  and  proceedings,  heretofore  had  in 
any  District  Court  of  the  United  States,  under  an  act  passed 
the  tenth  day  of  April,  in  the  year  one  thousand  seven  hun- 
dred and  ninety,  intituled  "An  act  to  promote  the  progress 
of  useful  arts,"  which  may  have  been  set  aside,  suspended  or 
abated,  by  reason  of  the  repeal  of  the  said  act,  may  be  restored, 
at  the  instance  of  the  plaintiff  or  defendant,  within  one  year' 
from  and  after  the  passing  of  this  act,  in  the  said  court,  to  the 
same  situation,  in  which  they  may  have  been  when  they  were  so 
set  aside,  suspended,  or  abated  ;  and  that  the  parties  to  the  said 
suits,  actions,  process  or  proceedings  be,  and  are  hereby,  entitled 
to  proceed  in  such  cases,  as  if  no  such  repeal  of  the  act  afore- 
said had  taken  place :  Provided  always,  That  before  any 
order  or  proceeding,  other  than  that  for  continuing  the  same 
suits,  after  the  reinstating  thereof,  shall  be  entered  or  had, 
the  defendant  or  plaintiff,  as  the  case  may  be,  against  whom 
the  same  may  have  been  reinstated,  shall  be  brought  into  court 
by  summons,  attachment,  or  such  other  proceeding  as  is  used 
in  other  cases  for  compelling  the  appearance  of  a  party. 

APPROVED  June  7,  1794. 

Repealed  July  4,  1836.   5  Statutes  at  Large,  Chap.  357,  Sec- 
tion 21,  p.  125. 


PATENT  ACT  OF  1800. 
2  STATUTES  AT  LARGE,  37. 

An  Act  to  extend  the  privilege  of  obtaining  patents  for  useful 
discoveries  and  inventions,  to  certain  persons  therein  men- 
tioned, and  to  enlarge  and  define  the  penalties  for  vio- 
lating the  rights  of  patentees. 

SECTION  1.  Be  it  enacted  by  the  Senate  and  House  of  Repre- 
sentatives of  the  United  States  of  America  in  Congress  assem- 
bled, That  all  and  singular  the  rights  and  privileges  given,  in- 
tended or  provided  to  citizens  of  the  United  States,  respecting 
patents  for  new  inventions,  discoveries,  and  improvements,  by 
the  act  intituled  "  An  act  to  promote  the  progress  of  useful 
arts,  and  to  repeal  the  act  heretofore  made  for  that  purpose,' ' 
shall  be,  and  hereby  are,  extended  and  given  to  all  aliens  who 
at  the  time  of  petitioning  in  the  manner  prescribed  by  the 
said  act,  shall  have  resided  for  two  years  within  the  United 
States,  which  privileges  shall  be  obtained,  used,  and  enjoyed 
by  such  persons,  in  as  full  and  ample  manner,  and  under  the 
same  conditions,  limitations,  and  restrictions,  as  by  the  said 
act  is  provided  and  directed  in  the  case  of  citizens  of  the 
United  States  :  Provided  always,  That  every  person  petition- 
ing for  a  patent  for  any  invention,  art,  or  discovery,  pursuant 
to  this  act,  shall  make  oath  or  affirmation  before  some  person 
duly  authorized  to  administer  oaths  before  such  patent  shall  be 
granted,  that  such  invention,  art,  or  discovery  hath  not,  to  the 
best  of  his  or  her  knowledge  or  belief,  been  known  or  used 
either  in  this  or  aay  foreign  country,  and  that  every  patent 
which  shall  be  obtained  pursuant  to  this  act,  for  any  invention, 
art,  or  discovery,  which  it  shall  afterwards  appear  had  been 
known  or  used  previous  to  such  application  for  a  patent,  shall 
be  utterly  void. 

SECTION  2.  And  be  it  further  enacted,  That  where  any  per- 
son hath  made,  or  shall  have  made,  any  new  invention, 
discover)',  or  improvement,  on  account  of  which  a  patent 
might,  by  virtue  of  this  or  the  above-mentioned  act,  be 
granted  to  such  person,  and  shall  die  before  any  patent  shall  be 
granted  therefor,  the  right  of  applying  for  and  obtaining  such 


564  THE   PATENT    STATUTES. 

patent,  shall  devolve  on  the  legal  representatives  of  such  per- 
son in  trust  for  the  heirs  at  law  of  the  deceased,  in  case  he  shall 
have  died  intestate  ;  but  if  otherwise,  then  in  trust  for  his 
devisees,  in  as  full  and  ample  manner,  and  under  the  same 
conditions,  limitations,  and  restrictions  as  the  same  was  held, 
or  might  have  been  claimed  or  enjoyed  by  such  person,  in  his 
or  her  lifetime  ;  and  when  application  for  a  patent  shall  be 
made  by  such  legal  representatives,  the  oath  or  affirmation, 
provided  in  the  third  section  of  the  before-mentioned  act,  shall 
be  so  varied  as  to  be  applicable  to  them. 

SECTION  3.  And  be  it  further  enacted,  That  where  any 
patent  shall  be  or  shall  have  been  granted  pursuant  to  this  or 
the  above-mentioned  act,  and  any  person  without  the  consent 
of  the  patentee,  his  or  her  executors,  administrators,  or  assigns, 
first  obtained  in  writing,  shall  make,  devise,  use,  or  sell  the 
thing  whereof  the  exclusive  right  is  secured  to  the  said  patentee 
by  such  patent,  such  person  so  offending  shall  forfeit  and  pay 
to  the  said  patentee,  his  executors,  administrators,  or  assigns, 
a  sum  equal  to  three  times  the  actual  damage  sustained  by  such 
patentee,  his  executors,  administrators,  or  assigns,  from  or  by 
reason  of  such  offence,  which  sum  shall  and  may  be  recovered 
by  action  on  the  case  founded  on  this  and  the  above-mentioned 
act,  in  the  circuit  court  of  the  United  States,  having  jurisdic- 
tion thereon. 

SECTION  4.  And  be  it  further  enacted,  That  the  fifth  section 
of  the  above-mentioned  act,  intituled  "  An  act  to  promote 
the  progress  of  useful  arts,  and  to  repeal  the  act  heretofore 
made  for  that  purpose, ' '  shall  be,  and  hereby  is,  repealed. 

APPROVED  April  17,  1800. 

Eepealed  July  4,  1836.  5  Statutes  at  Large,  Chap.  357, 
Section  21,  p.  125. 

PATENT  ACT  OF  1819. 
3  STATUTES  AT  LARGE,  481. 

An  Act  to  extend  the  jurisdiction  of  the  circuit  courts  of  the 
United  States  to  cases  arising  under  the  law  relating  to 
patents. 


THE  PATENT  ACT  OF  1819.  565 

Be  it  enacted  by  the  Senate  and  House  of  Representatives 
of  the  United  States  of  America  in  Congress  assembled,  That 
the  circuit  courts  of  the  United  States  shall  have  original 
cognizance,  as  well  in  equity  as  at  law,  of  all  actions,  suits, 
controversies,  and  cases  arising  under  any  law  of  the  United 
States,  granting  or  confirming  to  authors  or  inventors  the  ex- 
clusive right  to  their  respective  writings,  inventions,  and  dis- 
coveries ;  and  upon  any  bill  in  equity,  filed  by  any  party 
aggrieved  in  any  such  cases,  shall  have  authority  to  grant  in- 
junctions, according  to  the  course  and  principles  of  courts  of 
equity,  to  prevent  the  violation  of  the  rights  of  any  authors  or 
inventors,  secured  to  them  by  any  laws  of  the  United  States, 
on  such  terms  and  conditions  as  the  said  courts  may  deem  fit 
and  reasonable  :  Provided  however,  That  from  all  judgments 
and  decrees  of  any  circuit  courts  rendered  in  the  premises,  a 
writ  of  error  or  appeal,  as  the  case  may  require,  shall  lie  to  the 
Supreme  Court  of  the  United  States,  in  the  same  manner,  and 
under  the  same  circumstances,  as  is  now  provided  by  law  in 
other  judgments  and  decrees  of  such  circuit  courts. 

APPROVED  February  15,  1819. 

Kepealed  July  4,  1836.  5  Statutes  at  Large,  Chap.  357, 
Section  21,  p.  125. 

PATENT   ACT  OF  JULY  3,1832.- 

4  STATUTES  AT  LARGE,  559. 

An  Act  concerning  patents  for  useful  inventions. 
SECTION  1.  Be  it  enacted  by  the  Senate  and  House  of  Repre- 
sentatives of  the  United  States  of  America  in  Congress  assem- 
bled,  That  it  shall  be  the  duty  of  the  Secretary  of  State, 
annually,  in  the  month  of  January,  to  report  to  Congress,  and 
to  publish  in  two  of  the  newspapers  printed  in  the  city  of 
Washington,  a  list  of  all  the  patents  for  discoveries,  inventions, 
and  improvements,  which  shall  have  expired  within  the  year 
immediately  preceding,  with  the  names  of  the  patentees,  alpha- 
betically arranged. 

SECTION  2.  And  be  it  further  enacted,  That  application  to 
Congress  to  prolong  or  renew  the  term  of  a  patent  shall  be  made 


566  THE   PATENT    STATUTES. 

before  its  expiration,  and  shall  be  notified  at  least  once  a  month, 
for  three  months  before  its  presentation,  in  two  newspapers 
printed  in  the  city  of  Washington,  and  in  one  of  the  news- 
papers in  which  the  laws  of  the  United  States  shall  be  published 
in  the  State  or  Territory  in  which  the  patentee  shall  reside. 
The  petition  shall  set  forth  particularly  the  grounds  of  the  ap- 
plication. It  shall  be  verified  by  oath  ;  the  evidence  in  its 
support  may  be  taken  before  any  judge  or  justice  of  the  peace  ; 
it  shall  be  accompanied  by  a  statement  of  the  ascertained  value 
of  the  discovery,  invention,  or  improvement,  and  of  the  receipts 
and  expenditures  of  the  patentee,  so  as  to  exhibit  the  profit  or 
loss  arising  therefrom. 

SECTION  3.  And  be  it  further  enacted,  That  wherever  any 
patent  which  has  been  heretofore,  or  shall  be  hereafter,  granted 
to  any  inventor  in  pursuance  of  the  act  of  Congress,  entitled 
"  An  act  to  promote  the  progress  of  useful  arts,  and  to  repeal 
the  act  heretofore  made  for  that  purpose,"  passed  on  the 
twenty-first  day  of  February,  in  the  year  of  our  Lord,  one 
thousand  seven  hundred  and  ninety-three,  or  of  any  of  the  acts 
supplementary  thereto,  shall  be  invalid  or  inoperative,  by  reason 
that  any  of  the  terms  or  conditions  prescribed  in  the  third  section 
of  the  said  first-mentioned  act,  have  not,  by  inadvertence,  acci- 
dent, or  mistake,  and  without  any  fraudulent  or  deceptive  inten- 
tion, been  complied  with  on  the  part  of  the  said  inventor,  it  shall 
be  lawful  for  the  Secretary  of  State,  upon  the  surrender  to  him 
of  such  patent,  to  cause  a  new  patent  to  be  granted  to  the  said 
inventor  for  the  same  invention  for  the  residue  of  the  period 
then  unexpired,  for  which  the  original  patent  was  granted,  upon 
his  compliance  with  the  terms  and  conditions  prescribed  in  the 
said  third  section  of  the  said  act.  And,  in  case  of  his  death, 
or  any  assignment  by  him  made  of  the  same  patent,  the  like 
right  shall  vest  in  his  executors  and  administrators,  or  assignee 
or  assignees  :  Provided  however,  That  such  new  patent  so 
granted  shall,  in  all  respects,  be  liable  to  the  same  matters  of 
objection  and  defence  as  any  original  patent  granted  under  the 
said  first-mentioned  act.  But  no  public  use  or  privilege  of  the 
invention  so  patented,  derived  from  or  after  the  grant  of  the 
original  patent,  either  under  any  special  license  of  the  inventor, 


567 

or  without  the  consent  of  the  patentee  that  there  shall  be  a 
free  public  use  thereof,  shall,  in  any  manner,  prejudice  his 
right  of  recovery  for  any  use  or  violation  of  his  invention  after 
the  grant  of  such  new  patent  as  aforesaid. 

APPROVED  July  3,  1832. 

Repealed  July  4,  1836.  5  Statutes  at  Large,  Chap.  357, 
Section  21,  p.  125. 


PATENT   ACT   OF  JULY  13,   1832. 
4  STATUTES  AT  LARGE,  577. 

An  Act  concerning  the  issuing  of  patents  to  aliens,  for  useful 
discoveries  and  inventions. 

Be  it  enacted  ~hy  the  Senate  and  House  of  Representatives  of 
the  United  States  of  America  in  Congress  assembled,  That  the 
privileges  granted  to  the  aliens  described  in  the  first  section  of 
the  act,  to  extend  the  privilege  of  obtaining  patents  for  useful 
discoveries  and  inventions  to  certain  persons  therein  mentioned, 
and  to  enlarge  and  define  the  penalties  for  violating  the  rights 
of  patentees,  approved  April  seventeenth,  eighteen  hundred, 
be  extended  in  like  manner  to  every  alien  who,  at  the  time  of 
petitioning  for  a  patent,  shall  be  resident  in  the  United  States, 
and  shall  have  declared  his  intention,  according  to  law,  to  he- 
come  a  citizen  thereof  :  Providtd,  That  every  patent  granted 
by  virtue  of  this  act  and  the  privileges  thereto  appertaining, 
shall  cease  and  determine  and  become  absolutely  void  without 
resort  to  any  legal  process  to  annul  or  cancel  the  same  in*case 
of  a  failure  on  the  part  of  any  patentee,  for  the  space  of  one  year 
from  the  issuing  thereof,  to  introduce  into  public  use  in  the 
United  States  the  invention  or  improvement  for  which  the 
patent  shall  be  issued  ;  or  in  case  the  same  for  any  period  of 
six  months  after  such  introduction  shall  not  continue  to  be 
publicly  used  and  applied  in  the  United  States,  or  in  case  of 
failure  to  become  a  citizen  of  the  United  States,  agreeably  to 
notice  given  at  the  earliest  period  within  which  he  shall  be  en- 
titled to  become  a  citizen  of  the  United  States. 

APPROVED  July  13,  1832. 


568  THE   PATENT    STATUTES. 

Repealed  July  4,  1836.  5  Statutes  at  Large,  Chap.  357, 
Section  21,  p.  125. 

PATENT   ACT   OF    1836. 

5  STATUTES  AT  LARGE,  117. 

An  Act  to  promote  the  progress  of  the  useful  arts,  and  to 

repeal  all  acts  and  parts  of  acts  heretofore  made  for  that 

purpose. 

SECTION  1.  Be  it  enacted  by  the  Senate  and  House  of  Repre- 
sentatives of  the  United  States  of  America  in  Congress  assem- 
bled, That  there  shall  be  established  and  attached  to  the  De- 
partment of  State  an  office  to  be  denominated  the  Patent  Office  ; 
the  chief  officer  of  which  shall  be  called  the  Commissioner  of 
Patents,  to  be  appointed  by  the  President,  by  and  with  the 
advice  and  consent  of  the  Senate,  whose  duty  it  shall  be,  under 
the  direction  of  the  Secretary  of  State,  to  superintend,  execute, 
and  perform  all  such  acts  and  things  touching  and  respecting 
the  granting  and  issuing  of  patents  for  new  and  useful  dis- 
coveries, inventions,  and  improvements,  as  are  herein  provided 
for,  or  shall  hereafter  be,  by  law,  directed  to  be  done  and  per- 
formed, and  shall  have  the  charge  and  custody  of  all  the  books, 
records,  papers,  models,  machines,  and  all  other  things  belong- 
ing to  said  office.  And  said  Commissioner  shall  receive  the  same 
compensation  as  is  allowed  by  law  to  the  Commissioner  of  the 
Indian  Department,  and  shall  be  entitled  to  send  and  receive 
letters  and  packages  by  mail,  relating  to  the  business  of  the 
officS,  free  of  postage. 

SECTION  2.  And  be  it  further  enacted,  That  there  shall  be  in 
said  office  an  inferior  officer,  to  be  appointed  by  the  said  princi- 
pal officer,  with  the  approval  of  the  Secretary  of  State,  to  re- 
ceive an  annual  salary  of  seventeen  hundred  dollars,  and 
to  be  called  the  Chief  Clerk  of  the  Patent  Office  ;  who  in  all 
cases  during  the  necessary  absence  of  the  Commissioner,  or 
when  then  said  principal  office  shall  become  vacant,  shall  have 
the  charge  and  custody  of  the  seal,  and  of  the  records,  books, 
papers,  machines,  models,  and  all  other  things  belonging  to 
the  said  office,  and  shall  perform  the  duties  of  Commissioner 


•THE  PATENT  ACT  OF  1836.  569 

during  such  vacancy.  And  the  said  Commissioner  may  also, 
with  like  approval,  appoint  an  examining  clerk,  at  an  annual 
salary  of  fifteen  hundred  dollars  ;  two  other  clerks  at  twelve 
hundred  dollars  each,  one  of  whom  shall  be  a  competent 
draughtsman  ;  one  other  clerk  at  one  thousand  dollars ;  a 
machinist  at  twelve  hundred  and  fifty  dollars  ;  and  a  messen- 
ger at  seven  hundred  dollars.  And  said  Commissioner,  clerks, 
and  every  other  person  appointed  and  employed  in  said  office, 
shall  be  disqualified  arid  interdicted  from  acquiring  or  taking, 
except  by  inheritance,  during  the  period  for  which  they  shall 
hold  their  appointments,  respectively,  any  right  or  interest, 
directly  or  indirectly,  in  any  patent  for  an  invention  or  discovery 
which  has  been,  or  may  hereafter  be  granted. 

SECTION  3.  And  be  it  further  enacted,  That  the  said  principal 
officer,  and  every  other  person  to  be  appointed  in  the  said 
office,  shall,  before  he  enters  upon  the  duties  of  his  office  or 
appointment,  make  oath  or  affirmation  truly  and  faithfully  to 
execute  the  trust  committed  to  him.  And  the  said  Commis- 
sioner and  the  chief  clerk  shall  also,  before  entering  upon  their 
duties,  severally  give  bonds,  with  sureties,  to  the  Treasurer  of 
the  United  States,  the  former  in  the  sum  of  ten  thousand 
dollars,  and  the  latter  in  the  sum  of  five  thousand  dollars,  with 
condition  to  render  a  true  and  faithful  account  to  him  or  his 
successor  in  office,  quarterly,  of  all  moneys  which  shall  be  by 
them  respectively  received  for  duties  on  patents,  and  for  copies 
of  records  and  drawings,  and  all  other  moneys  received  by 
virtue  of  said  office. 

SECTION  4.  Andbeit  further  enacted,  That  the  said  Commis- 
sioner shall  cause  a  seal  to  be  made  and  provided  for  the  said 
office,  with  such  device  as  the  President  of  the  United  States 
shall  approve  ;  and  copies  of  any  records,  books,  papers,  or 
drawings  belonging  to  the  said  office,  under  the  signature  of 
the  said  Commissioner,  or,  when  the  office  shall  be  vacant  under 
the  signature  of  the  chief  clerk,  with  the  said  seal  affixed,  shall 
be  competent  evidence  in  all  cases  in  which  the  original  records, 
books,  papers,  or  drawings  could  be  evidence.  And  any  person 
making  application  therefor  may  have  certified  copies  of  the 
records,  drawings,  and  other  papers  deposited  in  said  office,  on 


570  THE    PATENT   STATUTES. 

paying  for  the  written  copies  the  sum  of  ten  cents  for  every 
page  of  one  hundred  words  ;  and  for  copies  of  drawings  the 
reasonable  expense  of  making  the  same. 

SECTION  5.  And  be  it  further  enacted,  That  all  patents  issued 
from  said  office  shall  be  issued  in  the  name  of  the  United  States, 
and  under  the  seal  of  said  office,  and  be  signed  by  the  Secre- 
tary of  State,  and  countersigned  by  the  Commissioner  of  the 
said  office,  and  shall  be  recorded,  together  with  the  descriptions, 
specifications,  and  drawings,  in  the  said  office,  in  books  to  be 
kept  for-that  purpose.  Every  such  patent  shall  contain  a  short 
description  or  title  of  the  invention  or  discovery,  correctly  in- 
dicating its  nature  and  design,  and  in  its  terms  grant  to  the 
applicant  or  applicants,  his  or  their  heirs,  administrators,  ex- 
ecutors, or  assigns,  for  a  term  not  exceeding  fourteen  years, 
the  full  and  exclusive  right  and  liberty  of  making,  using,  and 
vending  to  others  to  be  used,  the  said  invention  or  discovery, 
referring  to  the  specifications  for  the  particulars  thereof ,  a  copy 
of  which  shall  be  annexed  to  the  patent,  specifying  what  the 
patentee  claims  as  his  invention  or  discovery. 

SECTION  6.  And  be  itfurther  enacted,  That  any  person  or 
persons,  having  discovered  or  invented  any  new  and  useful  art, 
machine,  manufacture,  or  composition  of  matter,  or  any  new 
and  useful  improvement  on  any  art,  machine,  manufacture,  or 
composition  of  matter,  not  known  or  used  by  others  before  his 
or  their  discovery  or  invention  thereof,  and  not,  at  the  time  of 
his  application  for  a  patent,  in  public  use  or  on  sale,  with  his 
consent  or  allowance,  as  the  inventor  or  discoverer  ;  and  shall 
desire  to  obtain  an  exclusive  property  therein,  may  make  appli- 
cation, in  writing,  to  the  Commissioner  of  Patents,  expressing 
such  desire,  and  the  Commissioner,  on  due  proceedings  had, 
may  grant  a  patent  therefor.  But  before  any  inventor  shall 
receive  a  patent  for  any  such  new  invention  or  discovery,  he 
shall  deliver  a  written  description  of  his  invention  or  discovery, 
and  of  the  manner  and  process  of  making,  constructing,  using, 
and  compounding  the  same,  in  such  full,  clear,  and  exact  terms, 
avoiding  unnecessary  prolixity,  as  to  enable  any  person  skilled 
in  the  art  or  science  to  which  it  appertains,  or  with  which  it  is 
most  nearly  connected,  to  make,  construct,  compound,  and  use 


THE  PATENT  ACT  OF  1836.  571 

the  same ;  and  in  case  of  any  machine,  he  shall  fully  explain 
the  principle,  and  the  several  modes  in  which  he  has  contem- 
plated the  application  of  that  principle  or  character  by  which 
it  may  be  distinguished  from  other  inventions  ;  and  shall  par- 
ticularly  specify  and  point  out  the  part,  improvement,  or  com- 
bination, which  he  claims  as  his  own  invention  or  discovery. 
He  shall,  furthermore,  accompany  the  whole  with  a  drawing  or 
drawings,  and  written  references,  where  the  nature  of  the 
case  admits  of  drawings,  or  with  specimens  of  ingredients, 
and  of  the  composition  of  matter,  sufficient  in  quantity  for  the 
purpose  of  experiment,  where  the  invention  or  discovery  is  of 
a  composition  of  matter ;  which  descriptions  and  drawings, 
signed  by  the  inventor  and  attested  by  two  witnesses,  shall  be 
filed  in  the  Patent  Office ;  and  he  shall  moreover  furnish  a 
model  of  his  invention,  in  all  cases  which  admit  of  a  represen- 
tation by  model,  of  a  convenient  size  to  exhibit  advantageously 
its  several  parts.  The  applicant  shall  also  make  oath  or  affir- 
mation that  he  does  verily  believe  that  he  is  the  original  and 
first  inventor  or  discoverer  of  the  art,  machine,  composition, 
or  improvement,  for  which  he  solicits  a  patent,  and  that  he 
does  not  know  or  believe  that  the  same  was  ever  before  known 
or  used  ;  and  also  of  what  country  he  is  a  citizen  ;  which  oath 
or  affirmation  may  be  made  before  any  person  authorized  by 
law  to  administer  oaths. 

SECTION  7.  And  be  it  further  enacted,  That  on  the  filing  of 
any  such  application,  description,  and  specification,  and  the 
payment  of  the  duty  hereinafter  provided,  the  Commissioner 
shall  make,  or  cause  to  be  made,  an  examination  of  the  alleged 
new  invention  or  discovery  ;  and  if,  on  any  such  examination, 
it  shall  not  appear  to  the  Commissioner  that  the  same  had  been 
invented  or  discovered  by  any  other  person  in  this  country  prior 
to  the  alleged  invention  or  discovery  thereof  by  the  applicant, 
or  that  it  had  been  patented  or  described  in  any  printed  publi- 
cation in  this  or  any  foreign  country,  or  had  been  in  public  use 
or  on  sale  with  the  applicant's  consent  or  allowance  prior  to  the 
application,  if  the  Commissioner  shall  deem  it  to  be  sufficiently 
useful  and  important,  it  shall  be  his  duty  to  issue  a  patent 
therefor.  But  whenever,  on  such  examination,  it  shall  appear 


THE   PATENT    STATUTES. 

to  the  Commissioner  that  the  applicant  was  not  the  original  and 
first  inventor,  or  discoverer  thereof,  or  that  any  part  of  that 
which  is  claimed  as  new  had  before  been  invented  or  discov- 
ered, or  patented,  or  described  in  any  printed  publication  in 
this  or  any  foreign  country,  as  aforesaid,  or  that  the  description 
is  defective  and  insufficient,  he  shall  notify  the  applicant  thereof, 
giving  him,  briefly,  such  information  and  references  as  may  be 
useful  in  judging  of  the  propriety  of  renewing  his  appli- 
cation, or  of  altering  his  specification,  to  embrace  only  that 
part  of  the  invention  or  discovery  which  is  new.  In  every 
such  case,  if  the  applicant  shall  elect  to  withdraw  his  applica- 
tion, relinquishing  his  claim  to  the  model,  he  shall  be  entitled 
to  receive  back  twenty  dollars,  part  of  the  duty  required  by 
this  act,  on  filing  a  notice  in  writing  of  such  election  in  'the 
Patent  Office,  a  copy  of  which,  certified  by  the  Commissioner, 
shall  be  a  sufficient  warrant  to  the  treasurer  for  paying  back  to 
the  said  applicant  the  said  sum  of  twenty  dollars.  But  if  the 
applicant  in  such  case  shall  persist  in  his  claims  for  a  patent,  with 
or  without  any  alteration  in  his  specification,  he  shall  be  re- 
quired to  make  oath  or  affirmation  anew,  in  manner  as  afore- 
said. And  if  the  specification  and  claim  shall  not  have  been  so 
modified  as,  in  the  opinion  of  the  Commissioner,  shall  entitle 
the  applicant  to  a  patent,  he  may,  on  appeal,  and  upon  request  • 
in  writing,  have  the  decision  of  a  board  of  examiners,  to  be 
composed  of  three  disinterested  persons,  who  shall  be  appoint- 
ed for  that  purpose  by  the  Secretary  of  State,  one  of  whom  at 
least,  to  be  selected,  if  practicable  and  convenient,  for  his 
knowledge  and  skill  in  the  particular  art,  manufacture,  or 
branch  of  science  to  which  the  alleged  invention  appertains  ; 
who  shall  be  under  oath  or  affirmation  for  the  faithful  and  im- 
partial performance  of  the  duty  imposed  upon  them  by  said 
appointment.  Said  board  shall  be  furnished  with  a  certificate  in 
writing  of  the  opinion  and  decision  of  the  Commissioner,  stating 
the  particular  grounds  of  his  objection,  and  the  part  or  parts  of 
the  invention  which  he  considers  as  not  entitled  to  be  patented. 
And  the  said  board  shall  give  reasonable  notice  to  the  applicant, 
as  well  as  to  the  Commissioner,  of  the  time  and  place  of  their 
meeting,  that  they  may  have  an  opportunity  of  furnishing  them 


THE  PATENT  ACT  OF  1836.  573 

with  such  facts  and  evidence  as  they  may  deem  necessary  to  a 
iust  decision  ;  and  it  shall  be  the  duty  of  the  Commissioner  to 
'urnish  to  the  board  of  examiners  such  information  as  he  may 
possess  relative  to  the  matter  under  their  consideration.     And 
on  an  examination  and  consideration  of  the  matter  by  such 
toard,  it  shall  be  in  their  power,  or  of  a  majority  of  them,  to 
reverse  the  decision  of  the  Commissioner,  either  in  whole  or  in 
part,  and  their  opinion  being  certified  to  the  Commissioner,  he 
shall  be  governed  thereby  in  the  further  proceedings  to  be  had 
on  such  application  :  Provided  however,  That  before  a  board 
shall  be  instituted  in  any  such  case,  the  applicant  shall  pay  to 
the  credit  of  the  treasury,  as  provided  in  the  ninth  section  of 
this  act,  the  sum  of  twenty- five  dollars,  and  each  of  said  per- 
sons so  appointed  shall  be  entitled  to  receive  for  his  services  in 
each  case  a  sum  not  exceeding  ten  dollars,  to  be  determined  and 
paid  by  the  Commissioner  out  of  any  moneys  in  his  hands, 
which  shall  be  in  full  compensation  to  the  persons  who  may  be 
so  appointed,  for  their  examination  and  certificate  as  aforesaid. 
SECTION  8.   And  be  it  further  enacted,  That  whenever  an 
application  shall  be  made  for  a  patent  which,  in  the  opinion  of  the 
Commissioner,  would  interfere  with  any  other  patent  for  which 
an  application  may  be  pending,  or  with  any  unexpired  patent 
which  shall  have  been  granted,  it  shall  be  the  duty  of  the  Com- 
missioner to  give  notice  thereof  to  such  applicants,  or  patentees, 
as  the  case  may  be  ;  and  if  either  shall  be  dissatisfied  with  the 
decision  of  the  Commissioner  on  the  question  of  priority  of  right 
or  invention,  on  a  hearing  thereof,  he  may  appeal  from  such 
decision,  on  the  like  terms  and  conditions  as  are  provided  in 
the  preceding  section  of   this  act ;  and  the  like  proceedings 
shall  be  had,  to  determine  which  or  whether  either  of  the  appli- 
cants is  entitled  to  receive  a  patent  as  prayed  for.     But  noth- 
ing in  this  act  contained  shall  be  construed  to  deprive  an  orig- 
inal and  true  inventor  of  the  right  to  a  patent  for  his  invention, 
by  reason  of  his  having  previously  taken  out  letters-patent 
therefor  in  a  foreign  country,  and  the  same  having  been  pub- 
lished, at  any  time  within  six  months  next  preceding  the  filing 
of  his  specification  and  drawings.     And  whenever  the  appli- 
cant shall  request  it,  the  patent  shall  take  date  from  the  time 


574:  THE    PATENT   STATUTES. 

of  the  filing  of  the  specification  and  drawings,  not  however 
exceeding  six  months  prior  to  the  actual  issuing  of  the  patent  ; 
and  on  like  request,  and  the  payment  of  the  duty  herein 
required,  by  any  applicant,  his  specification  and  drawings  shall 
be  filed  in  the  secret  archives  of  the  office  until  he  shall  fur- 
nish the  model  and  the  patent  to  be  issued,  not  exceeding  the 
term  of  one  year,  the  applicant  being  entitled  to  notice  of 
interfering  applications: 

SECTION  9.  And  be  it  further  enacted,  That  before  any 
application  for  a  patent  shall  be  considered  by  the  Commissioner 
as  aforesaid,  the  applicant  shall  pay  into  the  treasury  of  the 
United  States,  or  into  the  Patent  Office,  or  into  any  of  the 
deposit  banks,  to  the  credit  of  the  treasury,  if  he  be  a  citizen 
of  the  United  States,  or  an  alien,  and  shall  have  been  resident 
in  the  United  States  for  one  year  next  preceding,  and  shall 
have  made  oath  of  his  intention  to  become  a  citizen  thereof, 
the  sum  of  thirty  dollars  ;  if  a  subject  of  the  king  of  Great 
Britain,  the  sum  of  five  hundred  dollars  ;  and  all  other  per- 
sons the  sum  of  three  hundred  dollars  ;  for  which  payment 
duplicate  receipts  shall  be  taken,  one  of  which  to  be  filed  in  the 
office  of  the  Treasurer.  And  the  moneys  received  into  the 
treasury  under  this  act  shall  constitute  a  fund  for  the  payment 
of  the  salaries  of  the  officers  and  clerks  herein  provided  for, 
and  all  other  expenses  of  the  Patent  Office,  and  to  be  called  the 
patent  fund. 

SECTION  10.  And  be  it  further  enacted,  That  where  any 
person  hath  made,  or  shall  have  made,  any  new  invention,  dis- 
covery, or  improvement,  on  account  of  which  a  patent  might 
by  virtue  of  this  act  be  granted,  and  such  person  shall  die  be- 
fore any  patent  shall  be  granted  therefor,  the  right  of  applying 
for  and  obtaining  such  patent  shall  devolve  on  the  executor  or 
administrator  of  such  person,  in  trust  for  the  heirs  at  law  of  the 
deceased,  in  case  he  shall  have  died  intestate  :  but  if  otherwise, 
then  in  trust  for  his  devisees,  in  as  full  and  ample  manner, 
and  under  the  same  conditions,  limitations,  and  restrictions  as 
the  same  was  held,  or  might  have  been  claimed  or  enjoyed  by 
such  person  in  his  or  her  lifetime  ;  and  when  application  for 
a  patent  shall  be  made  by  such  legal  representatives,  the  oath 


THE  PATENT  ACT  OF  1836.  575 

or  affirmation  provided  in  the  sixth  section  of  this  act  shall 
be  so  varied  as  to  be  applicable  to  them. 

SECTION  11.  And  be  it  further  enacted,  That  every  patent 
shall  be  assignable  in  law,  either  as  to  the  whole  interest,  or 
any  undivided  part  thereof,  by  any  instrument  in  writing  ; 
which  assignment,  and  also  every  grant  and  conveyance  of  the 
exclusive  right,  under  any  patent,  to  make  and  use,  and  to 
grant  to  others  to  make  and  use  the  thing  patented  within  and 
throughout  any  specified  part  or  portion  of  the  United  States, 
shall  be  recorded  in  the  Patent  Office  within  three  months  from 
the  execution  thereof,  for  which  the  assignee  or  grantee  shall 
pay  to  the  Commissioner  the  sum  of  three  dollars. 

SECTION  12.  And  be  it  further  enacted,  That  any  citizen  of 
the  United  States,  or  alien,  who  shall  have  been  a  resident  of 
the  United  States  one  year  next  preceding,  and  shall  have 
made  oath  of  his  intention  to  become  a  citizen  thereof,  who  shall 
have  invented  any  new  art,  machine,  or  improvement  thereof, 
and  shall  desire  further  time  to  make  the  same,  may,  on 
paying  to  the  credit  of  the  treasury,  in  manner  as  provided 
in  the  ninth  section  of  this  act,  the  sum  of  twenty  dollars,  file 
in  the  Patent  Office  a  caveat,  setting  forth  the  design  and  pur- 
pose thereof,  and  its  principal  and  distinguishing  characteris- 
tics, and  praying  protection  of  his  right  till  he  shall  have 
matured  his  invention  ;  which  sum  of  twenty  dollars,  in  case  the 
person  filing  such  caveat  shall  afterwards  take  out  a  patent  for 
the  invention  therein  mentioned,  shall  be  considered  a  part  of 
the  sum  herein  required  for  the  same.  And  such  caveat  shall  be 
filed  in  the  confidential  archives  of  the  office,  and  preserved  in 
secrecy.  And  if  application  shall  be  made  by  any  other  person 
within  one  year  from  the  time  of  filing  such  caveat,  for  a 
patent  of  any  invention  with  which  it  may  in  any  respect  inter- 
fere, it  shall  be  the  duty  of  the  Commissioner  to  deposit  the 
description,  specifications,  drawings,  and  model,  in  the  confi- 
dential archives  of  the  office,  and  to  give  notice,  by  mail,  to 
the  person  filing  the  caveat,  of  such  application,  who  shall, 
within  three  months  after  receiving  the  notice,  if  he  would 
avail  himself  of  the  benefit  of  his  caveat,  file  his  description, 
specifications,  drawings,  and  model ;  and  if,  in  the  opinion  of 


576 


THE   PATENT    STATUTES. 


the  Commissioner,  the  specifications  of  claim  interfere  with 
each  other,  like  proceedings  may  be  had  in  all  respects  as  are 
in  this  act  provided  in  the  case  of  interfering  applications  : 
Provided  however,  That  no  opinion  or  decision  of  any  board 
of  examiners,  under  the  provisions  of  this  act,  shall  preclude 
any  person,  interested  in  favor  of  or  against  the  validity  of  any 
patent  which  has  been  or  may  hereafter  be  granted,  from  the 
right  to  contest  the  same  in  any  judicial  court  in  any  action  in 
which  its  validity  may  come  in  question. 

SECTION  13.  And  be  it  further  enacted,  That  whenever  any 
patent  which  has  heretofore  been  granted,  or  which  shall  here- 
after be  granted,  shall  be  inoperative,  or  invalid,  by  reason  of 
a  defective  or  insufficient  description  or  specification,  or  by 
reason  of  the  patentee  claiming  in  his  specification  as  his  own 
invention  more  than  he  had  or  shall  have  a  right  to  claim  as 
new  ;  if  the  error  has  or  shall  have  arisen  by  inadvertency,  ac- 
cident, or  mistake,  and  without  any  fraudulent  or  deceptive  in- 
tention, it  shall  be  lawful  for  the  Commissioner,  upon  the  sur- 
render to  him  of  such  patent,  and  the  payment  of  the  further 
duty  of  fifteen  dollars,  to  cause  a  new  patent  to  be  issued  to 
the  said  inventor,  for  the  same  invention,  for  the  residue  of  the 
period  then  unexpired  for  which  the  original  patent  was  grant- 
ed, in  accordance  with  the  patentee's  corrected  description  and 
specification.  And  in  case  of  his  death,  or  any  assignment  by 
him  made  of  the  original  patent,  a  similar  right  shall  vest  in 
his  executors,  administrators,  or  assignees.  And  the  patent,  so 
reissued,  together  with  the  corrected  description  and  specifica- 
tion, shall  have  the  same  effect  and  operation  in  law,  on  the 
trial  of  all  actions  hereafter  commenced  for  causes  subsequently 
accruing,  as  though  the  same  had  been  originally  filed  in  such 
corrected  form,  before  the  issuing  out  of  the  original  patent. 
And  whenever  the  original  patentee  shall  be  desirous  of  adding 
the  description  and  specification  of  any  new  improvement  of 
the  original  invention  or  discovery  which  shall  have  been  in- 
vented or  discovered  by  him  subsequent  to  the  date  of  his 
patent,  he  may,  like  proceedings  being  had  in  all  respects  as  in 
the  case  of  original  applications,  and  on  the  payment  of  fifteen 
dollars  as  hereinbefore  provided,  have  the  same  annexed  to  the 


THE  PATENT  ACT  OF  1836.  577 

original  description  and  specification  ;  and  the  Commissioner 
shall  certify,  on  the  margin  of  such  annexed  description  and 
specification,  the  time  of  its  being  annexed  and  recorded  ;  and 
the  same  shall  thereafter  hare  the  same  effect  in  law,  to  all  in- 
tents and  purposes,  as  though  it  had  been  embraced  in  the 
original  description  and  specification. 

SECTION  14.  And  J>e  it  further  enacted,  That  whenever,  in 
any  action  for  damages  for  making,  using,  or  selling  the  thing 
whereof  the  exclusive  right  is  secured  by  any  patent  heretofore 
granted,  or  by  any  patent  which  may  hereafter  be  granted,  a 
verdict  shall  be  rendered  for  the  plaintiff  in  such  action,  it 
shall  be  in  the  power  of  the  court  to  render  judgment  for  any 
sum  above  the  amount  found  by  such  verdict  as  the  actual 
damages  sustained  by  the  plaintiff,  not  exceeding  three  times 
the  amount  thereof,  according  to  the  circumstances  of  the  case, 
•with  costs  ;  and  such  damages  may  be  recovered  by  .action  on 
the  case,  in  any  court  of  competent  jurisdiction,  to  be  brought 
in  the  name  or  names  of  the  person  or  persons  interested, 
•whether  as  patentees,  assignees,  or  as  grantees  of  the  exclusive 
right  within  and  throughout  a  specified  part  of  the  United 
States. 

SECTION  15.  And  be  it  further  enacted^  That  the  defendant 
in  any  such  action  shall  be  permitted  to  plead  the  general 
issue,  and  to  give  this  act  and  any  special  matter  in  evidence, 
of  which  notice  in  writing  may  have  been  given  to  the  plain- 
tiff or  his  attorney,  thirty  days  before  trial,  tending  to  prove 
that  the  description  and  specification  filed  by  the  plaintiff  does 
not  contain  the  whole  truth  relative  to  his  invention  or  dis- 
covery, or  that  it  contains  more  than  is  necessary  to  produce 
the  described  effect ;  which  concealment  or  addition  shall  fully 
appear  to  have  been  made  for  the  purpose  of  deceiving  the 
public,  or  that  the  patentee  was  not  the  original  and  first 
inventor  or  discoverer  of  the  thing  patented,  or  of  a  substantial 
and  material  part  thereof  claimed  as  new,  or  that  it  had  been 
described  in  some  public  work  anterior  to  the  supposed  dis- 
covery thereof  by  the  patentee,  or  had  been  in  public  use  or 
on  sale  with  the  consent  and  allowance  of  the  patentee  before 
his  application  for  a  patent,  or  that  he  had  surreptitiously  or 


578  THE   PATENT   STATUTES. 

unjustly  obtained  the  patent  for  that  which  was  in  fact  invented 
or  discovered  by  another,  who  was  using  reasonable  diligence 
in  adapting  and  perfecting  the  same  ;  or  that  the  patentee,  if 
an  alien  at  the  time  the  patent  was  granted,  had  failed  and 
neglected,  for  the  space  of  eighteen  months  from  the  date  of 
the  patent,  to  put  and  continue  on  sale  to  the  public,  on  rea- 
sonable terms,  the  invention  or  discovery  for  which  the  patent 
issued  ;  in  either  of  which  cases  judgment  shall  be  rendered 
for  the  defendant  with  costs.  And  whenever  the  defendant 
relies  in  his  defence  on  the  fact  of  a  previous  invention, 
knowledge,  or  use  of  the  thing  patented,  he  shall  state,  in  his 
notice  of  special  matter,  the  names  and  places  of  residence  of 
those  whom  he  intends  to  prove  to  have  possessed  a  prior 
knowledge  of  the  thing,  and  where  the  same  had  been  used  : 
Provided  however ',  That  whenever  it  shall  satisfactorily  appear 
that  the  patentee,  at  the  time  of  making  his  application  for 
the  patent,  believed  himself  to  be  the  first  inventor  or  discov- 
erer of  the  thing  patented,  the  same  shall  not  be  held  to  be 
void  on  account  of  the  invention  or  discovery  or  any  part 
thereof  having  been  before  known  or  used  in  any  foreign  coun- 
try, it  not  appearing  that  the  same  or  any  substantial  part 
thereof  had  before  been  patented  or  described  in  any  printed 
publication.  And  provided  also,  That  whenever  the  plaintiff 
shall  fail  to  sustain  his  action  on  the  ground  that  in  his  specifi- 
cation of  claim  is  embraced  more  than  that  of  which  he  was 
the  first  inventor,  if  it  shall  appear  that  the  defendant  had 
used  or  violated  any  part  of  the  invention  justly  and  truly 
specified  and  claimed  as  new,  it  shall  be  in  the  power  of  the 
court  to  adjudge  and  award  as  to  costs,  as  may  appear  to  be 
just  and  equitable. 

SECTION  16.  And  l>e  it  further  enacted,  That  whenever 
there  shall  be  two  interfering  patents,  or  whenever  a  patent 
on  application  shall  have  been  refused  on  an  adverse  decision 
of  a  board  of  examiners,  on  the  ground  that  the  patent  applied 
for  would  interfere  with  an  unexpired  patent  previously 
granted,  any  person  interested  in  any  such  patent,  either  by 
assignment  or  otherwise,  in  the  one  case,  and  any  such  appli- 
cant in  the  other  case,  may  have  remedy  by  bill  in  equity  ; 


THE   PATENT   ACT   OF    1836.  579 

and  the  court  having  cognizance  thereof,  on  notice  to  adverse 
parties,  and  other  due  proceedings  had,  may  adjudge  and  de- 
clare either  the  patents  void  in  the  whole  or  in  part,  or  inoper- 
ative or  invalid  in  any  particular  part  or  portion  of  the  United 
States,  according  to  the  interest  which  the  parties  to  such  suit 
may  possess  in  the  patent  or  the  inventions  patented,  and  may 
also  adjudge  that  such  applicant  is  entitled,  according  to  the 
principles  and  provisions  of  this  act,  to  have  and  receive  a 
patent  for  his  invention,  as  specified  in  his  claim,  or  for  any 
part  thereof,  as  the  fact  of  priority  of  right  or  invention  shall 
in  any  such  case  be  made  to  appear.  And  such  adjudication, 
if  it  be  in  favor  of  the  right  of  such  applicant,  shall  authorize 
the  Commissioner  to  issue  such  patent,  on  his  filing  a  copy  of 
the  adjudication,  and  otherwise  complying  with  the  requisi- 
tions of  this  act.  Provided  however,  That  no  such  judgment 
or  adjudication  shall  affect  the  rights  of  any  person  except  the 
parties  to  the  action  and  those  deriving  title  from  or  under 
them  subsequent  to  the  rendition  of  such  judgment. 

SECTION  17.  And  be  it  further  enacted,  That  all  actions, 
suits,  controversies,  and  cases  arising  under  any  law  of  the 
United  States,  granting  or  confirming  to  inventors  the  exclu- 
sive right  to  their  inventions  or  discoveries,  shall  be  originally 
cognizable,  as  well  in  equity  as  at  law,  by  the  circuit  courts 
of  the  United  States,  or  any  district  court  having  the  power 
and  jurisdiction  of  a  circuit  court ;  which  courts  shall  have 
power,  upon  a  bill  in  equity  filed  by  any  party  aggrieved,  in 
any  such  case,  to  grant  injunctions,  according  to  the  course 
and  principles  of  courts  of  equity,  to  prevent  the  violation  of 
the  rights  of  any  inventor  as  secured  to  him  by  any  law  of  the 
United  States,  on  such  terms  and  conditions  as  said  courts  may 
deem  reasonable  :  Provided  however,  That  from  all  judgments 
and  decrees  from  any  such  court  rendered  in  the  premises,  a 
writ  of  error  or  appeal,  as  the  case  may  require,  shall  lie  to 
the  Supreme  Court  of  the  United  States,  in  the  same  manner 
and  under  the  same  circumstances  as  is  now  provided  by  law 
in  other  judgments  and  decrees  of  circuit  courts,  and  in  all 
other  cases  in  which  the  court  shall  deem  it  reasonable  to  allow 
the  same. 


580  THE   PATENT    STATUTES. 

SECTION  18.  And  be  it  further  enacted,  That  whenever 
any  patentee  of  an  invention  or  discovery  shall  desire  an  ex- 
tension of  his  patent  beyond  the  term  of  its  limitation,  he  may 
make  application  therefor,  in  writing,  to  the  Commissioner 
of  the  Patent  Office,  setting  forth  the  grounds  thereof  ;  and 
the  Commissioner  shall,  on  the  applicant's  paying  the  sum  of 
forty  dollars  to  the  credit  of  the  treasury,  as  in  the  case  of  an 
original  application  for  a  patent,  cause  to  be  published  in  one 
or  more  of  the  principal  newspapers  in  the  city  of  Washington, 
and  in  such  other  paper  or  papers  as  he  may  deem  proper, 
published  in  the  section  of  country  most  interested  adversely 
to  the  extension  of  the  patent,  a  notice  of  such  application  and 
of  the  time  and  place  when  and  where  the  same  will  be  con- 
sidered, that  any  person  may  appear  and  show  cause  why  the 
extension  should  not  be  granted.  And  the  Secretary  of  State, 
the  Commissioner  of  the  Patent  Office,  and  the  Solicitor  of 
the  Treasury  shall  constitute  a  board  to  hear  and  decide  upon 
the  evidence  produced  before  them  both  for  and  against  the 
extension,  and  shall  sit  for  that  purpose  at  the  time  and  place 
designated  in  the  published  notice  thereof.  The  patentee 
shall  furnish  to  said  board  a  statement,  in  writing,  under  oath, 
of  the  ascertained  value  of  the  invention,  and  of  his  receipts 
and  expenditures,  sufficiently  in  detail  to  exhibit  a  true  and 
faithful  account  of  loss  and  profit  in  any  manner  accruing  to 
him  from  and  by  reason  of  said  invention.  And  if,  upon  a 
hearing  of  the  matter,  it  shall  appear  to  the  full  and  entire 
satisfaction  of  said  board,  having  due  regard  to  the  public 
interest  therein,  that  it  is  just  and  proper  that  the  term  of  the 
patent  should  be  extended,  by  reason  of  the  patentee,  without 
neglect  or  fault  on  his  part,  having  failed  to  obtain,  from  the 
use  and  sale  of  his  invention,  a  reasonable  remuneration  for 
the  time,  ingenuity,  and  expense  bestowed  upon  the  same,  and 
the  introduction  thereof  into  use,  it  shall  be  the  duty  of  the 
Commissioner  to  renew  and  extend  the  patent,  by  making  a 
certificate  thereon  of  such  extension,  for  the  term  of  seven 
years  from  and  after  the  expiration  of  the  first  term  ;  which 
certificate,  with  a  certificate  of  said  board  of  their  judgment 


THE  PATENT  ACT  OF  1836.  581 

and  opinion  as  aforesaid,  shall  be  entered  on  record  in  the 
Patent  Office  ;  and  thereupon  the  said  patent  shall  have  the 
same  effect  in  law  as  though  it  had  been  originally  granted  for 
the  term  of  twenty-one  years.  And  the  benefit  of  such  re- 
newal shall  extend  to  assignees  and  grantees  of  the  right  to  use 
the  thing  patented,  to  the  extent  of  their  respective  interests 
therein  :  Provided  however,  That  no  extension  of  a  patent 
shall  be  granted  after  the  expiration  of  the  term  for  which  it 
was  originally  issued. 

SECTION  19.  And  be  it  further  enacted,  That  there  shall  be 
provided  for  the  use  of  said  office,  a  library  of  scientific  works 
and  periodical  publications,  both  foreign  and  American,  calcu- 
lated to  facilitate  the  discharge  of  the  duties  hereby  required 
of  the  chief  officers  therein,  to  be  purchased  under  the  direc- 
tion of  the  Committee  of  the  Library  of  Congress.  And  the 
sum  of  fifteen  hundred  dollars  is  hereby  appropriated  for  that 
purpose,  to  be  paid  out  of  the  patent  fund. 

SECTION  20.  And  be  it  further  enacted,  That  it  shall  be  the 
duty  of  the  Commissioner  to  cause  to  be  classified  and  arranged, 
in  such  rooms  or  galleries  as  may  be  provided  for  that  purpose, 
in  suitable  cases,  when  necessary  for  their  preservation,  and  in 
such  manner  as  shall  be  conducive  to  a  beneficial  and  favorable 
display  thereof,  the  models  and  specimens  of  compositions  and 
of  fabrics  and  other  manufactures  and  works  of  art,  patented 
or  unpatented,  which  have  been,  or  shall  hereafter  be,  depos- 
ited in  said  office.  And  said  rooms  or  galleries  shall  be  kept 
open  during  suitable  hours  for  public  inspection. 

SECTION  21.  And  be  it  further  enacted,  That  all  acts  and 
parts  of  acts  heretofore  passed  on  this  subject  be,  and  the  same 
are  hereby  repealed  :  Provided  however,  That  all  actions  and 
processes  in  law  or  equity  sued  out  prior  to  the  passage  of  this 
act  may  be  prosecuted  to  final  judgment  and  execution,  in  the 
same  manner  as  though  this  act  had  not  been  passed,  excepting 
and  saving  the  application  to  any  such  action  of  the  provisions 
of  the  fourteenth  and  fifteenth  sections  of  this  act,  so  far  as 
they  may  be  applicable  thereto  ;  And  provided  also,  That  all 
applications  or  petitions  for  patents,  pending  at  the  time  of  the 


582  THE    PATENT    STATUTES. 

passage  of  this  act,  in  cases  where  the  duty  has  been  paid,  shall 
be  proceeded  with  and  acted  on  in  the  same  manner  as  though 
filed  after  the  passage  hereof. 

APPROVED  July  4,  1836. 

Eepealed  July  8,  1870.  16  Statutes  at  Large,  Chap.  230, 
Section  111,  p.  216. 

PATENT   ACT   OF  1837. 
5  STATUTES  AT  LARGE,  191. 

An  Act  in  addition  to  the  act  to  promote   the  progress  of 

science  and  useful  arts. 

SECTION  1.  Be  it  enacted  ~by  the  Senate  and  House  of 
Representatives  of  the  United  States  of  America  in  Congress 
assembled,  That  any  person  who  may  be  in  possession  of,  or  in 
any  way  interested  in,  any  patent  for  an  invention,  discovery, 
or  improvement,  issued  prior  to  the  fifteenth  day  of  December, 
in  the  year  of  our  Lord  one  thousand  eight  hundred  and  thirty- 
six,  or  in  an  assignment  of  any  patent,  or  interest  therein,  ex- 
ecuted and  recorded  prior  to  the  said  fifteenth  day  of  De- 
cember, may,  without  charge,  on  presentation  or  transmission 
thereof  to  the  Commissioner  of  Patents,  have  the  same  record- 
ed anew  in  the  Patent  Office,  together  with  the  descriptions, 
specifications  of  claim  and  drawings  annexed  or  belonging  to  the 
same  ;  and  it  shall  be  the  duty  of  the  Commissioner  to  cause 
the  same,  or  any  authenticated  copy  of  the  original  record, 
specification,  or  drawing  which  he  may  obtain,  to  be  transcribed 
and  copied  into  books  of  record  to  be  kept  for  that  purpose  ; 
and  wherever  a  drawing  was  not  originally  annexed  to  the 
patent  and  referred  to  in  the  specification,  any  drawing  pro- 
duced as  a  delineation  of  the  invention,  being  verified  by  oath 
in  such  manner  as  the  Commissioner  shall  require,  may  be  trans- 
mitted and  placed  on  file,  or  copied  as  aforesaid,  together  with 
certificate  of  the  oath  :  or  such  drawings  mav  be  made  in  the 

'  ™  •  «• 

office,  under  the  direction  of  the  Commissioner,  in  conformity 
with  the  specification.  And  it  shall  be  the  duty  of  the  Com- 
missioner to  take  such  measures  as  may  be  advised  and  de- 
termined by  the  Board  of  Commissioners  provided  for  in  the 


THE  PATENT  ACT  OF  1837.  583 

fourth  section  of  this  act,  to  obtain  the  patents,  specifications, 
and  copies  aforesaid,  for  the  purpose  of  being  so  transcribed 
and  recorded.  And  it  shall  be  the  duty  of  each  of  the  several 
clerks  of  the  judicial  courts  of  the  United  States,  to  transmit  as 
soon  as  may  be,  to  the  Commissioner  of  the  Patent  Office,  a 
statement  of  all  the  authenticated  copies  of  patents,  descriptions, 
specifications,  and  drawings  of  inventions  and  discoveries  made 
and  executed  prior  to  the  aforesaid  fifteenth  day  of  December, 
which  may  be  found  on  the  files  of  his  office  ;  and  also  to  make 
out  and  transmit  to  said  Commissioner,  for  record  as  aforesaid, 
a  certified  copy  of  every  such  patent,  description,  specification, 
or  drawing,  which  shall  be  specially  required  by  said  Com- 
missioner. 

SECTION  2.  And  be  it  further  enacted,  That  copies  of  such 
record  and  drawings,  certified  by  the  Commissioner,  or,  in  his 
absence,  by  the  chief  clerk,  shall  be  prima  facie  evidence  of 
the  particulars  of  the  invention  and  of  the  patent  granted 
therefor  in  any  judicial  court  of  the  United  States,  in  all  cases 
where  copies  of  the  original  record  or  specification  and  draw- 
ings would  be  evidence,  without  proof  of  the  loss  of  such  orig- 
inals ;  and  no  patent  issued  prior  to  the  aforesaid  fifteenth  day  of 
December  shall,  after  the  first  day  of  June  next,  be  received 
in  evidence  in  any  of  the  said  courts  in  behalf  of  the  patentee 
or  other  person  who  shall  be  in  possession  of  the  same,  unless  it 
shall  have  been  so  recorded  anew,  and  a  drawing  of  the  in- 
vention, if  separate  from  the  patent,  verified  as  aforesaid,  de- 
posited in  the  Patent  Office  ;  nor  shall  any  written  assignment 
of  any  such  patent,  executed  and  recorded  prior  to  the  said 
fifteenth  day  of  December,  be  received  in  evidence  in  any  of 
the  said  courts  in  behalf  of  the  assignee  or  other  person  in  pos- 
session thereof,  until  it  shall  have  been  so  recorded  anew. 

SECTION  3.  And  be  it  further  enacted,  That  whenever  it  shall 
appear  to  the  Commissioner  that  any  patent  was  destroyed  by 
the  burning  of  the  Patent  Office  building  on  the  aforesaid 
fifteenth  day  of  December,  or  was  otherwise  lost  prior  thereto, 
it  shall  be  his  duty,  on  application  therefor  by  the  patentee  or 
other  person  interested  therein,  to  issue  a  new  patent  for  the 
same  invention  or  discovery,  bearing  the  date  of  the  original 


584:  THE   PATENT    STATUTES. 

patent,  with  his  certificate  thereon  that  it  was  made  and  issued 
pursuant  to  the  provisions  of  the  third  section  of  this  act,  and 
shall  enter  the  same  of  record  :  Provided  however,  That  be- 
fore such  patent  shall  be  issued  the  applicant  therefor  shall  de- 
posit in  the  Patent  Office  a  duplicate,  as  near  as  may  be,  of  the 
original  model,  drawings,  and  description,  with  specification 
of  the  invention  or  discovery,  verified  by  oath,  as  shall  be  re- 
quired by  the  Commissioner ;  and  such  patent,  and  copies  of 
such  drawings  and  descriptions,  duly  certified,  shall  be  ad- 
missible as  evidence  in  any  judicial  court  of  the  United  States, 
and  shall  protect  the  rights  of  the  patentee,  his  administrators, 
heirs,  and  assigns,  to  the  extent  only  in  which  they  would 
have  been  protected  by  the  original  patent  and  specifica- 
tion. 

SECTION  4.  And  be  it  further  enacted,  That  it  shall  be  the 
duty  of  the  Commissioner  to  procure  a  duplicate  of  such  of  the 
models,  destroyed  by  fire  on  the  aforesaid  fifteenth  day  of 
December,  as  were  most  valuable  and  interesting,  and  whose 
preservation  would  be  important  to  the  public  ;  and  such  as 
would  be  necessary  to  facilitate  the  just  discharge  of  the  duties 
imposed  by  law  on  the  Commissioner  in  issuing  patents,  and  to 
protect  the  rights  of  the  public,  and  of  patentees  in  patented 
inventions  and  improvements  :  Provided,  That  a  duplicate  of 
such  models  may  be  obtained  at  a  reasonable  expense  :  And 
provided  also,  That  the  whole  amount  of  expenditure  for  this 
purpose  shall  not  exceed  the  sum  of  one  hundred  thousand 
dollars.  And  there  shall  be  a  temporary  board  of  Commis- 
sioners, to  be  composed  of  the  Commissioner  of  the  Patent 
Office  and  two  other  persons  to  be  appointed  by  the  President, 
whose  duty  it  shall  be  to  consider  and  determine  upon  the  best 
and  most  judicious  mode  of  obtaining  models  of  suitable  con- 
struction ;  and  also  to  consider  and  determine  what  models  may 
be  procured  in  pursuance  of,  and  in  accordance  with,  the  pro- 
visions and  limitations  in  this  section  contained.  And  said 
commissioners  may  make  and  establish  all  such  regulations, 
terms,  and  conditions,  not  inconsistent  with  law,  as  in  their 
opinion  may  be  proper  and  necessary  to  carry  the  provisions  of 
this  section  into  effect,  according  to  its  true  intent. 


THE  PATENT  ACT  OF  1837.  585 

SECTION  5.  And  be  it  further  enacted,  That,  whenever  a 
patent  shall  be  returned  for  correction  and  reissue  under  the 
thirteenth  section  of  the  act  to  which  this  is  additional,  and  the 
patentee  shall  desire  several  patents  to  be  issued  for  distinct 
and  separate  parts  of  the  thing  patented,  he  shall  first  pay,  in 
manner  and  in  addition  to  the  sum  provided  by  that  act,  the 
sum  of  thirty  dollars  for  each  additional  patent  so  to  be  issued  : 
Provided  however,  That  no  patent  made  prior  to  the  aforesaid 
fifteenth  day  of  December  shall  be  corrected  and  reissued  until 
a  duplicate  of  the  model  and  drawing  of  the  thing  as  originally 
invented,  verified  by  oath  as  shall  be  required  by  the  Commis- 
sioner, shall  be  deposited  in  the  Patent  Office  : 

Nor  shall  any  addition  of  an  improvement  be  made  to  any 
patent  heretofore  granted,  nor  any  new  patent  be  issued  for  an 
improvement  made  in  any  machine,  manufacture,  or  process, 
to  the  original  inventor,  assignee,  or  possessor  of  a  patent 
therefor,  nor  any  disclaimer  be  admitted  to  record,  until  a 
duplicate  model  and  drawing  of  the  thing  originally  intended, 
verified  as  aforesaid,  shall  have  been  deposited  in  the  Patent 
Office,  if  the  Commissioner  shall  require  the  same  ;  nor  shall 
any  patent  be  granted  for  an  invention,  improvement,  or  dis- 
covery, the  model  or  drawing  of  which  shall  have  been  lost, 
until  another  model  and  drawing,  if  required  by  the  Commis- 
sioner, shall,  in  like  manner,  be  deposited  in  the  Patent 
Office. 

And  in  all  such  cases,  as  well  as  in  those  which  may  arise 
under  the  third  section  of  this  act,  the  question  of  compensa- 
tion for  such  models  and  drawings  shall  be  subject  to  the  judg- 
ment and  decision  of  the  Commissioners,  provided  for  in  the 
fourth  section,  under  the  same  limitations  and  restrictions  as 
are  therein  prescribed. 

SECTION  6.  And  be  it  further  enacted,  That  any  patent 
hereafter  to  be  issued  may  be  made  and  issued  to  the  assignee 
or  assignees  of  the  inventor  or  discoverer,  the  assignment 
thereof  being  first  entered  of  record,  and  the  application 
therefor  being  duly  made,  and  the  specification  duly  sworn  to 
by  the  inventor.  And  in  all  cases  hereafter,  the  applicant 
for  a  patent  shall  be  held  to  furnish  duplicate  drawings,  when- 


586  THE   PATENT    STATUTES. 

ever  the  case  admits  of  drawings,  one  of  which  to  be  deposited 
in  the  office,  and  the  other  to  be  annexed  to  the  patent,  and 
considered  a  part  of  the  specification. 

SECTION  7.  And  be  it  further  enacted,  That,  whenever  any 
patentee  shall  have,  through  inadvertence,  accident,  or  mis- 
take, made  his  specification  of  claim  too  broad,  claiming  more 
than  that  of  which  he  was  the  original  or  first  inventor,  some 
material  or  substantial  part  of  the  thing  patented  being  truly 
and  justly  his  own,  any  such  patentee,  his  administrators,  ex- 
ecutors, and  assigns,  whether  of  the  whole  or  of  a  sectional 
interest  therein,  may  make  disclaimer  of  sucli  parts  of  the 
thing  patented  as  the  disclaimant  shall  not  claim  to  hold  by 
virtue  of  the  patent  or  assignment,  stating  therein  the  extent 
of  his  interest  in  such  patent  ;  which  disclaimer  shall  be  in 
writing,  attested  by  one  or  more  witnesses,  and  recorded  in  the 
Patent  Office,  on  payment  by  the  person  disclaiming  in  manner 
as  other  patent  duties  are  required  by  law  to  be  paid,  of  the 
sum  of  ten  dollars.  And  such  disclaimer  shall  thereafter  be 
taken  and  considered  as  part  of  the  original  specification,  to 
the  extent  of  the  interest  which  shall  be  possessed  in  the  patent 
or  right  secured  thereby,  by  the  disclaimant,  and  by  those 
claiming  by  or  under  him  subsequent  to  the  record  thereof. 
But  no  such  disclaimer  shall  affect  any  action  pending  at  the 
time  of  its  being  filed,  except  so  far  as  may  relate  to  the 
question  of  unreasonable  neglect  or  delay  in  filing  the  same. 

SECTION  8.  And  1)6  it  further  enacted,  That,  whenever 
application  shall  be  made  to  the  Commissioner  for  any  addition 
of  a  newly  discovered  improvement  to  be  made  to  an  existing 
patent,  or  whenever  a  patent  shall  be  returned  for  correction 
and  reissue,  the  specification  of  claim  annexed  to  every  such 
patent  shall  be  subject  to  revision  and  restriction,  in  the  same 
manner  as  are  original  applications  for  patents  ;  the  Commis- 
sioner shall  not  add  any  such  improvement  to  the  patent  in 
the  one  case,  nor  grant  the  reissue  in  the  other  case,  until  the 
applicant  shall  have  entered  a  disclaimer,  or  altered  his  speci- 
fication of  claim  in  accordance  with  the  decision  of  the  Commis- 
sioner ;  and  in  all  such  cases,  the  applicant,  if  dissatisfied  with 
such  decision,  shall  have  the  same  remedy,  and  be  entitled  to 


THE  PATENT  ACT  OF  1837.  587 

the  benefit  of  the  same  privileges  and  proceedings  as  are  pro- 
vided by  law  in  the  case  of  original  applications  for  patents. 

SECTION  9.  And  be  it  further  enacted,  any  thing  in  the 
fifteenth  section  of  the  act  to  which  this  is  additional  to  the 
contrary  notwithstanding,  That,  whenever  by  mistake,  acci- 
dent, or  inadvertence,  and  without  any  wilful  default  or  intent 
to  defraud  or  mislead  the  public,  any  patentee  shall  have  in 
his  specification  claimed  to  be  the  original  and  first  inventor  or 
discoverer  of  any  material  or  substantial  part  of  the  thing 
patented,  of  which  he  was  not  the  first  and  original  inventor, 
and  shall  have  no  legal  or  just  right  to  claim  the  same,  in  every 
such  case  the  patent  shall  be  deemed  good  and  valid  for  so 
much  of  the  invention  or  discovery  as  shall  be  truly  and  bond 
fide  his  own  ;  Provided,  It  shall  be  a  material  and  substantial 
part  of  the  thing  patented,  and  be  definitely  distinguishable 
from  the  other  parts  so  claimed  without  right  as  aforesaid. 
And  every  such  patentee,  his  executors,  administrators,  and 
assigns,  whether  of  the  whole,  or  of  a  sectional  interest  there- 
in, shall  be  entitled  to  maintain  a  suit  at  law  or  in  equity  on 
such  patent  for  any  infringement  of  such  part  of  the  invention 
or  discovery  as  shall  be  bond  fide  his  own  as  aforesaid,  not- 
withstanding the  specification  may  embrace  more  than  he  shall 
have  any  legal  right  to  claim.  But,  in  every  such  case  in 
which  a  judgment  or  verdict  shall  be  rendered  for  the  plaintiff, 
he  shall  not  be  entitled  to  recover  costs  against  the  defendant, 
unless  he  shall  have  entered  at  the  Patent  Office,  prior  to  the 
commencement  of  the  suit,  a  disclaimer  of  all  that  part  of  the 
thing  patented  which  was  so  claimed  without  right.  Provided 
however,  That  no  person  bringing  any  such  suit  shall  be  entitled 
to  the  benefits  of  the  provisions  contained  in  this  section,  who 
shall  have  unreasonably  neglected  or  delayed  to  enter  at  the 
Patent  Office  a  disclaimer  as  aforesaid. 

SECTION  10.  And  be  it  further  enacted,  That  the  Commis- 
sioner is  hereby  authorized  and  empowered  to  appoint  agents, 
in  not  exceeding  twenty  of  the  principal  cities  or  towns  in  the 
United  States  as  may  best  accommodate  the  different  sections 
of  the  country,  for  the  purpose  of  receiving  and  forwarding 
to  the  Patent  Office  all  such  models,  specimens  of  ingredients 


588 


THE   PATENT    STATUTES. 


and  manufactures,  as  shall  be  intended  to  be  patented  or  de- 
posited therein,  the  transportation  of  the  same  to  be  charge- 
able to  the  patent  fund. 

SECTION  11.  And  ~be  it  further  enacted,  That,  instead  of 
one  examining  clerk,  as  provided  by  the  second  section  of  the 
act  to  which  this  is  additional,  there  shall  be  appointed,  in 
manner  therein  provided,  two  examining  clerks,  each  to  receive 
an  annual  salary  of  fifteen  hundred  dollars  ;  and  also,  an  addi- 
tional copying  clerk,  at  an  annual  salary  of  eight  hundred 
dollars.  And  the  Commissioner  is  also  authorized  to  employ, 
from  time  to  time,  as  many  temporary  clerks  as  may  be  neces- 
sary to  execute  the  copying  and  draughting  required  by  the 
first  section  of  this  act,  and  to  examine  and  compare  the  records 
with  the  originals,  who  shall  receive  not  exceeding  seven  cents 
for  every  page  of  one  hundred  words,  and  for  drawings  and 
comparison  of  records  with  originals,  such  reasonable  compen- 
sation as  shall  be  agreed  upon  or  prescribed  by  the  Commis- 
sioner. 

SECTION  12.  And  be  it  further  enacted,  That,  wherever  the 
application  of  any  foreigner  for  a  patent  shall  be  rejected  and 
withdrawn  for  want  of  novelty  in  the  invention,  pursuant  to 
the  seventh  section  of  the  act  to  which  this  is  additional,  the 
certificate  thereof  of  the  Commissioner  shall  be  a  sufficient 
warrant  to  the  treasurer  to  pay  back  to  such  applicant  two 
thirds  of  the  duty  he  shall  have  paid  into  the  treasury  on  ac- 
count of  such  application. 

SECTION  13.  And  be  it  further  enacted,  That  in  all  cases  in 
which  an  oath  is  required  by  this  act,  or  by  the  act  to  which 
this  is  additional,  if  the  person  of  whom  it  is  required  shall  be 
conscientiously  scrupulous  of  taking  an  oath,  affirmation  may 
be  substituted  therefor. 

SECTION  14.  And  be  it  further  enacted,  That  all  moneys 
paid  into  the  treasury  of  the  United  States  for  patents  and  for 
fees  for  copies  furnished  by  the  Superintendent  of  the  Patent 
Office  prior  to  the  passage  of  the  act  to  which  this  is  additional, 
shall  be  carried  to  the  credit  of  the  patent  fund  created  by  said 
act ;  and  the  moneys  constituting  said  fund  shall  be,  and  the 
same  are  hereby,  appropriated  for  the  payment  of  the  salaries 


THE  PATENT  ACT  OF  1837.  589 

of  the  officers  and  clerks  provided  for  by  said  act,  and  all  other 
expenses  of  the  Patent  Office,  including  all  the  expenditures 
provided  for  by  this  act ;  and  also  for  such  other  purposes  as 
are  or  may  be  hereafter  specially  provided  for  by  law.  And 
the  Commissioner  is  hereby  authorized  to  draw  upon  said  fund, 
from  time  to  time,  for  such  sums  as  shall  be  necessary  to  carry 
into  effect  the  provisions  of  this  act,  governed,  however,  by 
the  several  limitations  herein  contained.  And  it  shall  be  his 
duty  to  lay  before  Congress,  in  the  month  of  January,  annually, 
a  detailed  statement  of  the  expenditures  and  payments  by  him 
made  from  said  fund  ;  And  it  shall  also  be  his  duty  to  lay  be- 
fore Congress,  in  the  month  of  January,  annually,  a  list  of  all 
patents  which  shall  have  been  granted  during  the  preceding 
year,  designating,  under  proper  heads,  the  subjects  of  such 
patents,  and  furnishing  an  alphabetical  list  of  the  patentees, 
with  their  places  of  residence  ;  and  he  shall  also  furnish  a  list 
of  all  patents  which  shall  have  become  public  property  during 
the  same  period  ;  together  with  such  other  information  of  the 
state  and  condition  of  the  Patent  Office  as  may  be  useful  to 
Congress  or  the  public. 

APPROVED  March  3,  1837. 

Kcpealed  July  8,  1870.  16  Statutes  at  Large,  Chap.  230, 
Section  111,  p.  216. 

PATENT    ACT    OF  1839. 

5  STATUTES  AT  LARGE,  353. 

An  Act  in  addition  to  "An  act  to  promote  the  progress  of  tho 

useful  arts." 

SECTION  1.  Be  it  enacted  by  the  Senate  and  House  of  Rep- 
resentatives of  the  United  States  of  America  in  Congress  as- 
sembled, That  there  shall  be  appointed,  in  manner  provided  in 
the  second  section  of  the  act  to  which  this  is  additional,  two  as- 
sistant examiners,  each  to  receive  an  annual  salary  of  twelve 
hundred  and  fifty  dollars. 

SECTION  2.  And  be  it  further  enacted,  That  the  Commissioner 
be  authorized  to  employ  temporary  clerks  to  do  any  necessary 
transcribing,  whenever  the  current  business  of  the  office  requires 


590  THE   PATENT    STATUTES. 

it ;  Provided  however,  That  instead  of  salary,  a  compensation 
shall  be  allowed,  at  a  rate  not  greater  than  is  charged  for  copies 
now  furnished  by  the  office. 

SECTION  3.  And  be  it  further  enacted,  That  the  Commissioner 
is  hereby  authorized  to  publish  a  classified  and  alphabetical  list 
of  all  patents  granted  by  the  Patent  Office  previous  to  said 
publication,  and  retain  one  hundred  copies  for  the  Patent 
Office  and  nine  hundred  copies  to  be  deposited  in  the  library 
of  Congress,  for  such  distribution  as  may  be  hereafter  directed  ; 
and  that  one  thousand  dollars,  if  necessary,  be  appropriated, 
out  of  the  patent  fund,  to  defray  the  expense  of  the  same. 

SECTION  4.  And  be  it  further  enacted,  That  the  sum  of 
three  thousand  six  hundred  and  fifty-nine  dollars  and  twenty- 
two  cents  be,  and  is  hereby,  appropriated  from  the  patent  fund, 
to  pay  for  the  use  and  occupation  of  rooms  in  the  City  Hall  by 
the  Patent  Office. 

SECTION  5.  And  be  it  further  enacted,  That  the  sum  of 
one  thousand  dollars  be  appropriated  from  the  patent  fund,  to 
be  expended  under  the  direction  of  the  Commissioner,  for 
the  purchase  of  necessary  books  for  the  library  of  the  Patent 
Office. 

SECTION  6.  And  be  it  further  enacted,  That  no  person  shall 
be  debarred  from  receiving  a  patent  for  any  invention  or  dis- 
covery, as  provided  in  the  act  approved  on  the  fourth  day  of 
July,  one  thousand  eight  hundred  and  thirty-six,  to  which  this 
is  additional,  by  reason  of  the  same  having  been  patented  in  a 
foreign  country  more  than  six  months  prior  to  his  application  : 
Provided,  That  the  same  shall  not  have  been  introduced  into 
public  and  common  use  in  the  United  States,  prior  to  the  ap- 
plication for  such  patent :  And  provided  also,  That  in  all  cases 
every  such  patent  shall  be  limited  to  the  term  of  fourteen  years 
from  the  date  or  publication  of  such  foreign  letters-patent. 

SECTION  7.  And  be  it  further  enacted,  That  every  person  or 
corporation  who  has,  or  shall  have,  purchased  or  constructed 
any  newly  invented  machine,  manufacture,  or  composition  of 
matter,  prior  to  the  application  by  the  inventor  or  discoveref 
for  a  patent,  shall  be  held  to  possess  the  right  to  use,  and  vend 
to  others  to  be  used,  the  specific  machine,  manufacture,  oi 


THE  PATENT  ACT  OF  1839.  591 

composition  of  matter  so  made  or  purchased,  without  liability 
therefor  to  the  inventor,  or  any  other  person  interested  in  such 
invention  ;  and  no  patent  shall  be  held  to  be  invalid,  by  reason  of 
such  purchase,  sale,  or  use  prior  to  the  application  for  a  patent  as 
aforesaid,  except  on  proof  of  abandonment  of  such  invention 
to  the  public  ;  or  that  such  purchase,  sale,  or  prior  use  has 
been  for  more  than  two  years  prior  to  such  application  for  a 
patent. 

SECTION  8.  And  he  it  further  enacted,  That  so  rmtch  of  the 
eleventh  section  of  the  above  recited  act  as  requires  the  payment 
of  three  dollars  to  the  Commissioner  of  Patents  for  recording 
any  assignment,  grant,  or  conveyance  of  the  whole  or  any  part 
of  the  interest  or  right  under  any  patent,  be,  and  the  same  is 
hereby,  repealed  ;  and  all  such  assignments,  grants,  and  convey- 
ances shall,  in  future,  be  recorded,  without  any  charge  what- 
ever. 

SECTION  10.  And  be  it  further  enacted,  That  the  provisions 
of  the  sixteenth  section  of  the  before -recited  act  shall  extend 
to  all  cases  where  patents  are  refused  for  any  reason  whatever, 
either  by  the  Commissioner  of  Patents  or  by  the  Chief  Justice 
of  the  District  of  Columbia,  upon  appeals  frqm  the  decision  of 
said  Commissioner,  as  well  as  where  the  same  shall  have  been 
refused  on  account  of,  or  by  reason  of,  interference  with  a  pre- 
viously existing  patent ;  and  in  all  cases  where  there  is  no  op- 
posing party,  a  copy  of  the  bill  shall  be  served  upon  the  Com- 
missioner of  Patents,  when  the  whole  of  the  expenses  of  the 
proceeding  shall  be  paid  by  the  applicant,  whether  the  final 
decision  shall  be  in  his  favor  or  otherwise. 

SECTION  11.  And  ~be  it  further  enacted,  That  in  all  cases 
where  an  appeal  is  now  allowed  bylaw  from  the  decision  of  the 
Commissioner  of  Patents  to  a  board  of  examiners,  provided  for 
in  the  seventh  section  of  the  act  to  which  this  is  additional,  the 
party,  instead  thereof,  shall  have  a  right  to  appeal  to  the 
Chief  Justice  of  the  district  court  of  the  United  States  for  the 
District  of  Columbia,  by  giving  notice  thereof  to  the  Commis- 
sioner, and  filing  in  the  Patent  Office,  within  such  time  as  the 
Commissioner  shall  appoint,  his  reasons  of  appeal  specifically 
set  forth  in  writing,  and  also  paying  into  the  Patent  Office,  to 


592  THE    PATENT    STATUTES. 

the  credit  of  the  patent  fund,  the  sum  of  twenty-five  dollars. 
And  it  shall  be  the  duty  of  said  Chief  Justice,  on  petition,  to 
hear  and  determine  all  such  appeals,  and  to  revise  such  decisions 
in  a  summary  way,  on  the  evidence  produced  before  the  Com- 
missioner, at  such  early  and  convenient  time  as  he  may  appoint, 
first  notifying  the  Commissioner  of  the  time  and  place  of  hear- 
ing, whose  duty  it  shall  be  to  give  notice  thereof  to  all  parties 
who  appear  to  be  interested  therein,  in  such  manner  as  said 
judge  shall  prescribe.  The  Commissioner  shall  also  lay  before 
the  said  judge  all  the  original  papers  and  evidence  in  the  case, 
together  with  the  grounds  of  his  decision,  fully  set  forth  in 
writing,  touching  all  the  points  involved  by  the  reasons  of 
appeal,  to  which  the  revision  shall  be  confined.  And  at  the 
request  of  any  party  interested,  or  at  the  desire  of  the  judge, 
the  Commissioner  and  the  examiners  in  the  Patent  Office  may  be 
examined  under  oath,  in  explanation  of  the  principles  of  the 
machine  or  other  thing  for  which  a  .patent,  in  such  case  is 
prayed  for.  And  it  shall  be  the  duty  of  said  judge,  after  a  hear- 
ing of  any  such  case,  to  return  all  the  papers  to  the  Commis- 
sioner, with  a  certificate  of  his  proceedings  and  decision,  which 
shall  be  entered  qf  record  in  the  Patent  Office  ;  and  sucn  de- 
cision, so  certified,  shall  govern  the  further  proceedings  of  the 
Commissioner  in  such  case  :  Provided  however,  That  no  opinion 
or  decision  of  the  judge  in  any  such  case  shall  preclude  any 
person  interested  in  favor  or  against  the  validity  of  any  patent 
which  has  been  or  may,  hereafter  be  granted  from  the  right  to 
contest  the  same  in  any  judicial  court,  in  any  action  in  which 
its  validity  may  come  in  question. 

SECTION  12.  And  ~be  it  further  enacted.  That  the  Commis- 
sioner of  Patents  shall  have  power  to  make  all  such  regulations, 
in  respect  to  the  taking  of  evidence  to  be  used  in  contested 
cases  before  him,  as  may  be  just  and  reasonable.  And  so  much 
of  the  act  to  which  this  is  additional,  as  provides  for  a  board 
of  examiners,  is  hereby  repealed. 

SECTION  13.  And  be  it  further  enacted,  That  there  be  paid 
annually,  out  of  the  patent  fund,  to  the  said  Chief  Justice,  in 
consideration  of  the  duties  herein  imposed,  the  sum  of  one 
hundred  dollars. 


THE   PATENT   ACT  OF   1842.  593 

APPROVED  March  3,  1839. 

Eepealed  July  8,  1870.  16  Statutes  at  Large,  Chap.  230, 
Section  111,  p.  216. 

PATENT    ACT   OF    1842. 
5  STATUTES  AT  LARGE,  543. 

An  Act  in  addition  to  an  act  to  promote  the  progress  of  the 
useful  arts,  and  to  repeal  all  acts  and  parts  of  acts  hereto- 
fore made  for  that  purpose. 

SECTION  1.  Be  it  enacted  ~by  the  Senate  and  House  of  Rep. 
resentatives  of  the  United  States  of  America  in  Congress  as- 
sembled, That  the  Treasurer  of  the  United  States  be,  and  he 
hereby  is,  authorized  to  pay  back,  out  of  the  patent  fund,  any 
sum  or  sums  of  money,  to  any  person  who  shall  have  paid  the 
same  into  the  Treasury,  or  to  any  receiver  or  depositary  to  the 
credit  of  the  Treasurer,  as  for  fees  accruing  at  the  Patent 
Office  through  mistake,  and  which  are  not  provided  to  be  paid 
by  existing  laws,  certificate  thereof  being  made  to  the  said 
Treasurer  by  the  Commissioner  of  Patents. 

SECTION  2.  And  be it  further  enacted.  That  the  third  section 
of  the  act  of  March,  eighteen  hundred  and  thirty -Beven,  which 
authorizes  the  renewing  of  patents  lost  prior  to  the  fifteenth  of 
December,  eighteen  hundred  and  thirty-six,  is  extended  to 
patents  granted  prior  to  said  fifteenth  day  of  December,  though 
they  may  have  been  lost  subsequently  :  Provided  however, 
The  same  shall  not  have  been  recorded  anew  under  the  provi- 
sions of  said  act. 

SECTION  3.  And  be  it  further  enacted,  That  any  citizen  or 
citizens,  or  alien  or  aliens,  having  resided  one  year  in  the  United 
States,  and  taken  the  oath  of  his  or  their  intention  to  become 
a  citizen  or  citizens,  who  by  his,  her,  or  their  own  industry, 
genius,  efforts,  and  expense,  may  have  invented  or  pro- 
duced any  new  and  original  design  for  a  manufacture, 
whether  of  metal  or  other  material  or  materials,  or  any  new 
and  original  design  for  the  printing  of  woollen,  silk,  cotton,  or 
other  fabrics,  or  any  new  and  original  design  for  a  bust,  statue, 
or  bas-relief  or  composition  in  alto  or  basso  relievo,  or  any  new 


594:  THE    PATENT    STATUTES. 

and  original  impression  or  ornament,  or  to  be  placed  on  any 
article  of  manufacture,  the  same  being  formed  in  marble  or 
other  material,  or  any  new  and  useful  pattern,  or  print,  or 
picture,  to  be  either  worked  into  or  worked  on,  or  printed  or 
painted  or  cast  or  otherwise  fixed  on,  any  article  of  manu- 
facture, or  any  new  and  original  shape  or  configuration  of  any 
article  of  manufacture  not  known  or  used  by  others  before  his, 
her,  or  their  invention  or  production  thereof,  and  prior  to  the 
time  of  his,  her,  or  their  application  for  a  patent  therefor,  and 
who  shall  desire  to  obtain  an  exclusive  property  or  right  therein 
to  make,  use,  and  sell  and  vend  the  same,  or  copies  of  the  same, 
to  others,  by  them  to  be  made,  used,  and  sold,  may  make  ap- 
plication in  writing  to  the  Commissioner  of  Patents  expressing 
such  desire,  and  the  Commissioner,  on  due  proceedings  had, 
may  grant  a  patent  therefor,  as  in  the  case  now  of  application 
for  a  patent :  Provided,  That  the  fee  in  such  cases,  which  by 
the  now  existing  laws  would  be  required  of  the  particular  ap- 
plicant, shall  be  one  half  the  sum,  and  that  the  duration  of 
said  patent  shall  be  seven  years,  and  that  all  the  regulations  and 
provisions  which  now  apply  to  the  obtaining  or  protection  of 
patents  not  inconsistent  with  the  provisions  of  this  act  shall 
apply  to  applications  under  this  section. 

SECTION  4.  And  ~be  it  further  enacted.  That  the  oath  required 
for  applicants  for  patents  may  be  taken,  when  the  applicant  is 
not,  for  the  time  being,  residing  in  the  United  States,  before 
any  minister,  plenipotentiary,  charge  d'affaires,  consul,  or 
commercial  agent  holding  commission  under  the  government 
of  the  United  States,  or  before  any  notary  public  of  the  foreign 
country  in  which  such  applicant  may  be. 

SECTION  5.  And  be  it  further  enacted,  That  if  any  person  or 
persons  shall  paint  or  print  or  mould,  cast,  carve,  or  engrave, 
or  stamp,  upon  anything  made,  used,  or  sold,  Dy  him,  for 
the  sole  making  or  selling  which  he  hath  not  or  shall  not  have 
obtained  letters-patent,  the  name  or  any  imitation  of  the 
name  of  any  other  person  who  hath  or  shall  have  obtained 
letters-patent  for  the  sole  making  and  vending  of  such  thing, 
without  consent  of  such  patentee,  or  his  assigns  or  legal  rep- 
resentatives ;  or  if  any  person,  upon  any  such  thing  not  having 


THE   PATENT   ACT   OF    1842.  595 

been  purchased  from  the  patentee,  or  some  person  who  pur- 
chased it  from  or  under  such  patentee,or  not  having  the  license  or 
consent  of  such  patentee,  or  his  assigns  or  legal  representatives, 
shall  write,  paint,  print,  mould,  cast,  carve,  engrave,  stamp, 
or  otherwise  make  or  affix  the  word  "patent,"  or  the  words 
"letters-patent,"  or  the  word  "patentee,"  or  any  word  or 
words  of  like  kind,  meaning,  or  import,  with  the  view  or  in- 
tent of  imitating  or  counterfeiting  the  stamp,  mark,  or  other 
device,  of  the  patentee,  or  shall  affix  the  same,  or  any  word, 
stamp,  or  device,  of  like  import,  on  any  unpatented  article,  for 
the  purpose  of  deceiving  the  public,  he,  she,  or  they,  so  of- 
fending, shall  be  liable  for  such  offence  to  a  penalty  of  not  less 
than  one  hundred  dollars,  with  costs,  to  be  recovered  by  action 
in  any  of  the  circuit  courts  of  the  United  States,  or  in  any  of 
the  district  courts  of  the  United  States  having  the  powers  and 
jurisdiction  of  a  circuit  court  ;  one  half  of  which  penalty,  as 
recovered,  shall  be  paid  to  the  patent  fund,  and  the  other  half 
to  any  person  or  persons  who  shall  sue  for  the  same. 

SECTION  6.  And  be  it  further  enacted,  That  all  patentees 
and  assignees  of  patents  hereafter  granted  are  hereby  required 
to  stamp,  engrave,  or  cause  to  be  stamped  or  engraved,  on 
each  article  vended,  or  offered  for  sale,  the  date  of  the  patent ; 
and  if  any  person  or  persons,  patentees,  or  assignees,  shall 
neglect  to  do  so,  he,  she,  or  they  shall  be  liable  to  the  same 
penalty,  to  be  recovered  and  disposed  of  in  the  manner  speci- 
fied in  the  foregoing  fifth  section  of  this  act. 

APPROVED  August  29,  1842. 

Kepealed  July  8,  1870.  16  Statutes  at  Large,  Chap.  230, 
Section  111,  p.  216. 


PATENT  ACT  OF  1848. 
9  STATUTES  AT  LARGE,  231. 

An  Act  to  provide  additional  Examiners  in  the  Patent  Office, 
and  for  other  Purposes. 

SECTION  1.  Be  it  enacted  ~by  ike  Senate  and  House  of  Rep- 
resentatives of  the  United  States  of  America  in  Congress  as- 


596  THE    PATENT    STATUTES. 

senibled,  That  there  shall  be  appointed,  in  the  manner  provided 
in  the  second  section  of  the  act  entitled  "  An  Act  to  promote 
the  progress  of  useful  arts,  and  to  repeal  all  acts  and  parts  of 
acts  heretofore  made  for  that  purpose,"  approved  July  fourth, 
eighteen  hundred  and  thirty-six,  two  principal  examiners,  and 
two  assistant  examiners,  in  addition  to  the  number  of  ex- 
aminers now  employed  in  the  Patent  Office  ;  and  that  hereafter 
each  of  the  principal  examiners  employed  in  the  Patent  Office 
shall  receive  an  annual  salary  of  twenty-five  hundred  dollars, 
and  each  of  the  assistant  examiners  an  annual  salary  of  fifteen 
hundred  dollars  :  Provided,  That  the  power  to  extend  patents, 
now  vested  in  the  board  composed  of  the  Secretary  of  State, 
Commissioner  of  Patents,  and  Solicitor  of  the  Treasury,  by  the 
eighteenth  section  of  the  act  approved  July  fourth,  eighteen 
hundred  and  thirty-six,  respecting  the  Patent  Office,  shall  here- 
after be  vested  solely  in  the  Commissioner  of  Patents ;  and 
when  an  application  is  made  to  him  for  the  extension  -of  a 
patent  according  to  said  eighteenth  section,  and  sixty  days' 
notice  given  thereof,  he  shall  refer  the  case  to  the  principal 
examiner  having  charge  of  the  class  of  inventions  to  which  said 
case  belongs,  who  shall  make  full  report  to  said  Commissioner 
of  the  said  case,  and  particularly  whether  the  invention  or  im- 
provement secured  in  the  patent  was  new  and  patentable  when 
patented  ;  and  thereupon  the  said  Commissioner  shall  grant  or 
refuse  the  extension  of  said  patent,  upon  the  same  principles 
and  rules  that  have  governed  said  board  ;  but  no  patent  shall 
be  extended  for  a  longer  term  than  seven  years. 

SECTION  2.  And  be  it  further  enacted,  That  hereafter  the 
Commissioner  of  Patents  shall  require  a  fee  of  one  dollar  for 
recording  any  assignment,  grant,  or  conveyance  of  the  whole 
or  any  part  of  the  interest  in  letters-patent,  or  power  of  at- 
torney, or  license  to  make  or  use  the  thing  patented,  when 
such  instrument  shall  not  exceed  three  hundred  words ;  the 
sum  of  two  dollars  when  it  shall  exceed  three  hundred  and  shall 
not  exceed  one  thousand  words  ;  and  the  sum  of  three  dollars 
when  it  shall  exceed  one  thousand  words  ;  which  fees  shall  in 
all  cases  be  paid  in  advance. 

SECTION  3.  And  be  it  further  enacted.  That  there  shall  bo 


THE  PATENT  ACT  OF  1848.  597 

appointed  in  manner  aforesaid,  two  clerks,  to  be  employed  in 
copying  and  recording,  and  in  other  services  in  the  Patent 
Office,  who  shall  each  be  paid  a  salary  of  one  thousand  two 
hundred  dollars  per  annum. 

SECTION  4.  And  be  it  further  enacted,  That  the  Commis- 
sioner of  Patents  is  hereby  authorized  to  send  by  mail,  free  of 
postage,  the  annual  reports  of  the  Patent  Office,  in  the  same 
manner  in  which  he  is  empowered  to  send  letters  and  packages 
relating  to  the  business  of  the  Patent  Office. 

APPROVED  May  27,  1848. 

Kepealed  July  8,  1870.  16  Statutes  at  Large,  Chap.  230, 
Section  111,  p.  216. 


PATENT   ACT  OF  1849. 

9  STATUTES  AT  LARGE,  395. 

Section  2  of  the  Act  entitled  "  An  Act  to  establish  the  Home 
Department,  and  to  provide  for  the  Treasury  Department 
an  Assistant  Secretary  of  the  Treasury  and  a  Commissioner 
of  the  Customs." 

SECTION  2.  And  be  it  further  enacted,  That  the  Secretary  of 
the  Interior  shall  exercise  and  perform  all  the  acts  of  supervi- 
sion and  appeal  in  regard  to  the  office  of  Commissioner  of  Pat- 
ents, now  exercised  by  the  Secretary  of  State  ;  and  the  said  Sec- 
retary of  the  Interior  shall  sign  all  requisitions  for  the  advance 
or  payment  of  money  out  of  the  Treasury  on  estimates  or  ac- 
counts, subject  to  the  same  adjustment  or  control  now  exercised 
on  similar  estimates  or  accounts  by  the  First  or  Fifth  Auditor 
and  First  Comptroller  of  the  Treasury. 

APPROVED  March  3,  1849. 

Eepealed  July  8,  1870.  16  Statutes  at  Large,  Chap.  230, 
Section  111,  p.  216. 

PATENT  ACT   OF  1852. 

10  STATUTES  AT  LARGE,  75. 

An  Act  in  addition  to  "An  Act  to  Promote  the  Progress  of 
the  Useful  Arts." 


598  THE   PATENT    STATUTES. 

SECTION  1.  Be  it  enacted  by  the  Senate  and  House  of  Rep- 
resentatives of  the  United  States  of  America  in  Congress  as- 
sembled. That  appeals  provided  for  in  the  eleventh  section  of  the 
act  entitled  An  Act  in  addition  to  an  act  to  promote  the  prog- 
ress of  the  useful  arts,  approved  March  the  third,  eighteen  hun- 
dred and  thirty-nine,  may  also  be  made  to  either  of  the  assistant 
judges  of  the  Circuit  Court  of  the  District  of  Columbia,  and 
all  the  powers,  duties,  and  responsibilities  imposed  by  the  afore- 
said act,  and  conferred  upon  the  chief  judge,  are  hereby  im- 
posed and  conferred  upon  each  of  the  said  assistant  judges. 

SECTION  2.  And  he  it  further  enacted,  That  in  case  appeals 
shall  be  made  to  the  said  chief  judge,  or  to  either  of  the  said 
assistant  judges,  the  Commissioner  of  Patents  shall  pay  to  such 
chief  judge  or  assistant  judge  the  sum  of  twenty-five  dollars, 
required  to  be  paid  by  the  appellant  into  the  Patent  Office  by 
the  eleventh  section  of  said  act,  on  said  appeal. 

SECTION  3.  And  ~be  it  further  enacted,  That  section  thirteen 
of  the  aforesaid  act,  approved  March  the  third,  eighteen  hun- 
dred and  thirty-nine,  is  hereby  repealed. 

APPROVED  August  30,  1852. 

Eepealed  July  8,  1870.  16  Statutes  at  Large,  Chap.  230, 
Section  111,  p.  216. 

PATENT   ACT   OF  FEBRUARY  18,    1861. 

12  STATUTES  AT  LARGE,   130. 
An  Act  to  extend  the  right  of  appeal  from  the  decisions  of 

Circuit  Courts  to  the  Supreme  Court  of  the  United  States. 

SECTION  1.  Be  it  enacted  by  the  Senate  and  House  of  Repre- 
sentatives of  the  United  States  of  America  in  Congress  as- 
sembled, That  from  all  judgments  and  decrees  of  any  Circuit 
Court  rendered  in  any  action,  suit,  controversy,  or  case,  at  law 
or  in  equity,  arising  under  any  law  of  the  United  States  grant- 
ing or  confirming  to  authors  the  exclusive  right  to  their  respec- 
tive writings,  or  to  inventors  the  exclusive  right  to  their  inven- 
tions or  discoveries,  a  writ  of  error  or  appeal,  as  the  case  may 
require,  shall  lie,  at  the  instance  of  either  party,  to  the  Su- 
preme Court  of  the  United  States,  in  the  same  manner  and 


THE  PATENT  ACT  OF  1861.  599 

under  the  same  circumstances  as  is  now  provided  by  law  in 
other  judgments  and  decrees  of  such  circuit  courts,  without 
regard  to  the  sum  or  value  in  controversy  in  the  action. 
APPROVED  February  18,  1861. 

Repealed  July  8,  1870.     16  Statutes  at  Large,   Chap.  230, 
Section  111,  p.  216. 


PATENT   ACT  OF  MAKCH  2,   1861. 

12  STATUTES  AT  LARGE,  246. 
An  Act  in  Addition  to  "  An  Act  to  promote  the  Progress  of 

the  useful  Arts." 

SECTION  1.  Be  it  enacted  by  the  Senate  and  House  of  Repre- 
sentatives of  the  United  States  of  America  in  Congress  as- 
semble/I, That  the  Commissioner  of  Patents  may  establish  rules 
for  taking  affidavits  and  depositions  required  in  cases  pending 
in  the  Patent  Office,  and  such  affidavits  and  depositions  may  be 
taken  before  any  justice  of  the  peace,  or  other  officer  authorized 
by  law  to  take  depositions  to  be  used  in  the  courts  of  the 
United  States,  or  in  the  State  courts  of  any  State  where  such 
officer  shall  reside  ;  and  in  any  contested  case  pending  in  the 
Patent  Office  it  shall  be  lawful  for  the  clerk  of  any  court  of  the 
United  States  for  any  district  or  Territory,  and  he  is  hereby  re- 
quired, upon  the  application  of  any  party  to  such  contested 
case,  or  the  agent  or  attorney  of  such  party,  to  issue  subprenas 
for  any  witnesses  residing  or  being  within  the  said  district  or 
Territory,  commanding  such  witnesses  to  appear  and  testify  be- 
fore any  justice  of  the  peace,  or  other  officer  as  aforesaid,  resid- 
ing within  the  said  district  or  Territory,  at  any  time  and  place 
in  the  subpoena  to  be  stated  ;  and  if  any  witness,  after  being 
duly  served  with  such  subpoena,  shall  refuse  or  neglect  to  ap- 
pear, or,  after  appearing,  shall  refuse  to  testify  (not  being 
privileged  from  giving  testimony),  such  refusal  or  neglect  being 
proved  to  the  satisfaction  of  any  judge  of  the  court  whose  clerk 
shall  have  issued  such  subpoena,  said  judge  may  thereupon  pro- 
ceed to  enforce  obedience  to  the  process,  or  to  punish  the  diso- 
bedience in  like  manner  as  any  court  of  the  United  States  may 
do  in  case  of  disobedience  to  process  of  subpoena  ad  testifican- 


600 


THE   PATENT    STATUTES. 


dum  issued  by  such  court ;  and  witnesses  in  such  cases  shall  be 
allowed  the  same  compensation  as  is  allowed  to  witnesses  at- 
tending the  courts  of  the  United  States  :  Provided,  That  no 
witness  shall  be  required  to  attend  at  any  place  more  than 
forty  miles  from  the  place  where  the  subpoena  shall  be  served 
upon  him  to  give  a  deposition  under  this  law  :  Provided  also, 
That  no  witness  shall  be  deemed  guilty  of  contempt  for  refus- 
ing to  disclose  any  secret  invention  made  or  owned  by  him  : 
And  provided 'further ,  That  no  witness  shall  be  deemed  guilty 
of  contempt  for  disobeying  any  subpoena  directed  to  him  by 
virtue  of  this  act,  unless  his  fees  for  going  to,  returning  from, 
and  one  day's  attendance  at  the  place  of  examination,  shall  be 
paid  or  tendered  to  him  at  the  time  of  the  service  of  the 
subpoena. 

SECTION  2.  And  be  it  further  enacted,  That  for  the  purposes 
of  securing  greater  uniformity  of  action  in  the  grant  and  refusal 
of  letters-patent,  there  shall  be  appointed  by  the  President,  by 
and  with  the  advice  and  consent  of  the  Senate,  three  examiners 
in  chief,  at  an  annual  salary  of  three  thousand  dollars  each,  to 
be  composed  of  persons  of  competent  legal  knowledge  and 
scientific  ability,  whose  duty  it  shall  be,  on  the  written  petition 
of  the  applicant  for  that  purpose  being  filed,  to  revise  and  de- 
termine upon  the  validity  of  decisions  made  by  examiners  when 
adverse  to  the  grant  of  letters-patent ;  and  also  to  revise  and 
determine  in  like  manner  upon  the  validity  of  the  decisions  of 
examiners  in  interference  cases,  and  when  required  by  the 
Commissioner  in  applications  for  the  extension  of  patents,  and 
to  perform  such  other  duties  as  may  be  assigned  to  them  by 
the  Commissioner ;  that  from  their  decisions  appeals  may  be 
taken  to  the  Commissioner  of  Patents  in  person,  upon  pay- 
ment of  the  fee  hereinafter  prescribed  ;  that  the  said  examiners 
in  chief  shall  be  governed  in  their  action  by  the  rules  to  be 
prescribed  by  the  Commissioner  of  Patents. 

SECTION  3.  And  be  it  further  enacted,  That  no  appeal  shall 
be  allowed  to  the  examiners  in  chief  from  the  decisions  of  the 
primary  examiners,  except  in  interference  cases,  until  after  the 
application  shall  have  been  twice  rejected  ;  and  the  second 
examination  of  the  application  by  the  primary  examiner  shall 


THE  PATENT  ACT  OF  1861.  601 

not  be  had  until  the  applicant,  in  view  of  the  references  given 
on  the  first  rejection,  shall  have  renewed  the  oath  of  invention, 
as  provided  for  in  the  seventh  section  of  the  act  entitled  "  An 
act  to  promote  the  progress  of  the  useful  arts,  and  to  repeal 
all  acts  and  parts  of  acts  heretofore  made  for  that  purpose," 
approved  July  fourth,  eighteen  hundred  and  thirty-six. 

SECTION  4.  And  be  it  further  enacted,  That  the  salary  of  the 
Commissioner  of  Patents,  from  and  after  the  passage  of  this 
act,  shall  be  four  thousand  five  hundred  dollars  per  annum,  and 
the  salary  of  the  chief  clerk  of  the  Patent  Office  shall  be  two 
thousand  five  hundred  dollars,  and  the  salary  of  the  librarian 
of  the  Patent  Office  shall  be  eighteen  hundred  dollars. 

SECTION  5.  And  be  it  further  enacted,  That  the  Commissioner 
of  Patents  is  authorized  to  restore  to  the  respective  applicants, 
or  when  not  removed  by  them,  to  otherwise  dispose  of  such  of 
the  models  belonging  to  rejected  applications  as  he  shall  not 
think  necessary  to  be  preserved.  The  same  authority  is  also 
given  in  relation  to  all  models  accompanying  applications  for 
designs.  He  is  further  authorized  to  dispense  in  future  with 
models  of  designs  when  the  design  can  be  sufficiently  repre- 
sented by  a  drawing. 

SECTION  6.  And  be  it  further  enacted.  That  the  tenth  section 
of  the  act  approved  the  third  of  March,  eighteen  hundred  and 
thirty-seven,  authorizing  the  appointment  of  agents  for  the 
transportation  of  models  and  specimens  to  the  Patent  Office, 
is  hereby  repealed. 

SECTION  7.  And  be  it  further  enacted,  That  the  Commis- 
sioner is  further  authorized,  from  time  to  time,  to  appoint,  in 
the  manner  already  provided  for  by  law,  such  an  additional  num- 
ber of  principal  examiners,  first  assistant  examiners,  and  sec- 
ond assistant  examiners  as  may  be  required  to  transact  the 
current  business  of  the  office  with  despatch,  provided  the 
whole  number  of  additional  examiners  shall  not  exceed  four 
of  each  class,  and  that  the  total  annual  expenses  of  the 
Patent  Office  shall  not  exceed  the  annual  receipts. 

SECTION  8.  And  be  it  further  enacted,  That  the  Commissioner 
may  require  all  papers  filed  in  the  Patent  Office,  if  not  cor- 
rectly, legibly,  and  clearly  written,  to  be  printed  at  the  cost  of 


602  THE    PATENT    STATUTES. 

the  parties  filing  such  papers  ;  and  for  gross  misconduct  he  may 
refuse  to  recognize  any  person  as  a  patent  agent,  either  gener- 
ally or  in  any  particular  case  ;  but  the  reasons  of  the  Commis- 
sioner for  such  refusal  shall  be  duly  recorded,  and  be  subject 
to  the  approval  of  the  President  of  the  United  States. 

SECTION  9.  And  be  it  further  enacted,  That  no  money  paid 
as  a  fee,  on  any  application  for  a  patent  after  the  passage  of 
this  act,  shall  be  withdrawn  or  refunded,  nor  shall  the  fee  paid 
on  filing  a  caveat  be  considered  as  part  of  the  sum  required  to 
be  paid  on  filing  a  subsequent  application  for  a  patent  for  the 
same  invention.  That  the  three  months'  notice  given  to  any 
caveator,  in  pursuance  of  the  requirements  of  the  twelfth  sec- 
tion of  the  act  of  July  fourth,  eighteen  hundred  and  thirty-six, 
shall  be  computed  from  the  day  on  which  such  notice  is  depos- 
ited in  the  post-office  at  Washington,  with  the  regular  time  for 
the  transmission  of  the  same  added  thereto,  which  time  shall  be 
indorsed  on  the  notice  ;  and  that  so  much  of  the  thirteenth 
section  of  the  act  of  Congress,  approved  July  fourth,  eighteen 
hundred  and  thirty-six,  as  authorizes  the  annexing  to  letters- 
patent  of  the  description  and  specification  of  additional  improve- 
ments is  hereby  repealed,  and  in  all  cases  where  additional  im- 
provements would  now  be  admissible,  independent  patents 
must  be  applied  for. 

SECTION  10.  And  be  it  further  enacted,  That  all  laws  now  in 
force  fixing  the  rates  of  the  Patent  Office  fees  to  be  paid,  and 
discriminating  between  the  inhabitants  of  the  United  States 
and  those  of  other  countries,  which  shall  not  discriminate 
against  the  inhabitants  of  the  United  States,  are  hereby  re- 
pealed, and  in  their  stead  the  following  rates  are  established  : — 

On  filing  each  caveat,  ten  dollars. 

On  filing  each  original  application  for  a  patent,  except  for  a 
design,  fifteen  dollars. 

On  issuing  each  original  patent,  twenty  dollars. 

On  every  appeal  from  the  examiner  in  chief  to  the  Commis- 
sioner, twenty  dollars. 

On  every  application  for  the  reissue  of  a  patent,  thirty 
dollars. 

On   every  application  for  the  extension  of  a  patent,  fifty 


THE   PATENT   ACT   OF    1861. 

dollars  ;  and  fifty  dollars  in  addition,  on  the  granting  of  every 
extension. 

On  filing  each  disclaimer,  ten  dollars. 

For  certified  copies  of  patents  and  other  papers,  ten  cents 
per  hundred  words. 

For  recording  every  assignment,  agreement,  power  of  at- 
torney, and  other  papers,  of  three  hundred  words  or  under, 
one  dollar. 

For  recording  every  assignment,  and  other  papers,  over 
three  hundred  and  under  one  thousand  words,  two  dollars. 

For  recording  every  assignment  or  other  writing,  if  over 
one  thousand  words,  three  dollars. 

For  copies  of  drawings,  the  reasonable  cost  of  making  the 
same. 

SECTION  11.  And  be  it  further  enacted,  That  any  citizen  or 
citizens,  or  alien  or  aliens,  having  resided  one  year  in  the 
United  States,  and  taken  the  oath  of  his  or  their  intention  to 
become  a  citizen  or  citizens,  who,  by  his,  her,  or  their  own  in- 
dustry, genius,  efforts,  and  expense  may  have  invented  or 
produced  any  new  and  original  design^  or  a  manufacture, 
whether  of  metal  or  other  material  or  materials,  and  original 
design  for  a  bust,  statue,  or  bas-relief,  or  composition  in  alto  or 
basso  relievo,  or  any  new  and  original  impression  or  ornament, 
or  to  be  placed  on  any  article  of  manufacture,  the  same  being 
formed  in  marble  or  other  material,  or  any  new  and  useful 
pattern,  or  print,  or  picture,  to  be  either  worked  into  or 
worked  on,  or  printed,  or  painted,  or  cast,  or  otherwise  fixed 
on  any  article  of  manufacture,  or  any  new  and  original  shape 
or  configuration  of  any  article  of  manufacture,  not  known  or 
used  by  others  before  his,  her,  or  their  invention  or  production 
thereof,  and  prior  to  the  time  of  his,  her,  or  their  application 
for  a  patent  therefor,  and  who  shall  desire  to  obtain  an  exclu- 
sive property  or  right  therein  to  make,  use,  and  sell,  and  vend 
the  same,  or  copies  of  the  same,  to  others,  by  them  to  be  made, 
used,  and  sold,  may  make  application,  in  writing,  to  the  Com- 
missioner of  Patents,  expressing  such  desire  ;  and  the  Commis- 
sioner, on  due  proceedings  had,  may  grant  a  patent  therefor, 
as  in  the  case  now  of  application  for  a  patent,  for  the  term  of 


604:  THE    PATENT    STATUTES. 

three  and  one  half  years,  or  for  the  term  of  seven  years,  or  for 
the  term  of  fourteen  years,  as  the  said  applicant  may  elect  in 
his  application  :  Provided,  That  the  fee  to  be  paid  in  such 
application  shall  be  for  the  term  of  three  years  and  six  months, 
ten  dollars,  for  seven  years,  fifteen  dollars,  and  for  fourteen 
years,  thirty  dollars  :  And  provided,  That  the  patentees  of 
designs  under  this  act  shall  be  entitled  to  the  extension  of  their 
respective  patents  for  the  term  of  seven  years,  from  the  day  on 
which  said  patent  shall  expire,  upon  the  same  terms  and 
restrictions  as  are  now  provided  for  the  extension  of  letters- 
patent. 

SECTION  12.  A.nd  be  it  further  enacted,  That  all  applications 
for  patents  shall  be  completed  and  prepared  for  examination 
within  two  years  after  the  filing  of  the  petition,  and  in  default 
thereof  they  shall  be  regarded  as  abandoned  by  the  parties 
thereto  ;  unless  it  be  shown  to  the  satisfaction  of  the  Commis- 
sioner of  Patents  that  such  delay  was  unavoidable  ;  and  all 
applications  now  pending  shall  be  treated  as  if  filed  after 
the  passage  of  this  act,  and  all  applications  for  the  extension  of 
patents  shall  be  filed  at  least  ninety  days  before  the  expiration 
thereof  ;  and  notice  of  the  day  set  for  the  hearing  of  the  case 
shall  be  published,  as  now  required  by  law,  for  at  least  sixty 
days. 

SECTION  13.  And  be  it  further  enacted,  That  in  all  cases 
where  an  article  is  made  or  vended  by  any  person  under  the 
protection  of  letters-patent,  it  shall  be  the  duty  of  such  person 
to  give  sufficient  notice  to  the  public  that  said  article  is  so 
patented,  either  by  fixing  thereon  the  word  "patented," 
together  with  the  day  and  year  the  patent  was  granted  ;  or 
when,  from  the  character  of  the  article  patented,  that  may  be 
impracticable,  by  enveloping  one  or  more  of  the  said  articles, 
and  affixing  a  label  to  the  package,  or  otherwise  attaching 
thereto  a  label  on  which  the  notice,  with  the  date,  is  printed  ; 
on  failure  of  which,  in  any  suit  for  the  infringement  of  letters- 
patent  by  the  party  failing  so  to  mark  the  article  the  right  to 
which  is  infringed  upon,  no  damage  shall  be  recovered  by  the 
plaintiff,  except  on  proof  that  the  defendant  was  duly  notified 
of  the  infringement,  and  continued  after  such  notice  to  make 


THE  PATENT  ACT  OF  1861.  605 

or  vend  the  article  patented.  And  the  sixth  section  of  the  act 
entitled  "  An  act  in  addition  to  an  act  to  promote  the  prog- 
ress of  the  useful  arts,"  and  so  forth,  approved  the  twenty- 
ninth  day  of  August,  eighteen  hundred  and  forty-two,  be,  and 
the  same  is  hereby,  repealed. 

SECTION  14.  And  be  it  further  enacted,  That  the  Commis- 
sioner of  Patents  be,  and  he  is  hereby,  authorized  to  print,  or 
in  his  discretion  to  cause  to  be  printed,  ten  copies  of  the 
description  and  claims  of  all  patents  which  may  hereafter  be 
granted,  and  ten  copies  of  the  drawings  of  the  same,  when 
drawings  shall  accompany  the  patents  :  Provided,  The  cost  of 
printing  the  text  of  said  descriptions  and  claims  shall  not 
exceed,  exclusive  of  stationery,  the  sum  of  two  cents  per  hun- 
dred words  for  each  of  said  copies,  and  the  cost  of  the  drawing 
shall  not  exceed  fifty  cents  per  copy  ;  one  copy  of  the  above 
number  shall  be  printed  on  parchment  to  be  affixed  to  the 
letters-patent ;  the  work  shall  be  under  the  direction,  and  sub- 
ject to  the  approval,  of  the  Commissioner  of  Patents,  and  the 
expense  of  the  said  copies  shall  be  paid  for  out  of  the  patent  fund. 

SECTION  15.  And  be  it  further  enacted,  That  printed  copies 
of  the  letters-patent  of  the  United  States,  with  the  seal  of  the 
Patent  Office  affixed  thereto  and  certified  and  signed  by  the 
Commissioner  of  Patents,  shall  be  legal  evidence  of  the  con- 
tents of  said  letters-patent  in  all  cases. 

SECTION  16.  And  be  it  further  enacted,  That  all  patents 
hereafter  granted  shall  remain  in  force  for  the  term  of  seven- 
teen years  from  the  date  of  issue ;  and  all  extension  of  such 
patents  is  hereby  prohibited. 

SECTION  17.  And  be  it  further  enacted,  That  all  acts  and 
parts  of  acts  heretofore  passed,  which  are  inconsistent  with  the 
provisions  of  this  act,  be,  and  the  same  are  hereby,  repealed. 

APPROVED  March  2,  1861. 

Repealed  July  8,  1870.  16  Statutes  at  Large,  Chap.  230, 
Section  111,  p.  216. 


THE    PATENT    STATUTES. 

0 

PATENT   ACT   OF  1862. 

12  STATUTES  AT  LAKGE,  583. 

Section  4  of  an  Act  making  supplemental  appropriations  for 

sundry  civil  expenses,  &c. 

SECTION  4.  For  the  fund  of  the  Patent  Office,  fifty  thousand 
eight  hundred  and  fifty-five  dollars  and  forty-nine  cents,  to 
supply  a  deficiency  existing  under  the  act  of  March  second, 
eighteen  hundred  and  sixty-one,  entitled  "An  act  in  addition 
to  an  act  to  promote  the  progress  of  the  useful  arts"  :  Pro- 
vided, That  the  fourteenth  section  of  said  act  be,  and  the  same 
is  hereby,  repealed. 

APPROVED  July  16,  1862. 


PATENT  ACT   OF  1863. 
12  STATUTES  AT  LARGE,  796. 

An  Act  to  amend  an  Act  entitled  "  An  Act  to  promote  the 
Progress  of  the  useful  Arts." 

SECTION  1.  Be  it  enacted  ly  the  Senate  and  Hoiise  of  Rep- 
resentatives of  the  United  States  of  America  in  Congress 
assembled,  That  so  much  of  section  seven  of  the  act  entitled 
"  An  act  to  promote  the  progress  of  the  useful  arts,"  approved' 
July  fourth,  eighteen  hundred  and  thirty-six,  as  requires  a 
renewal  of  the  oath,  be,  and  the  same  is  hereby,  repealed. 

SECTION  2.  And  be  it  further  enacted,  That,  whereas  the 
falling  off  of  the  revenue  of  the  Patent  Office  required  a  reduc- 
tion of  the  compensation  of  the  examiners  and  clerks,  or  other 
employees  in  the  office,  after  the  thirty-first  day  of  August, 
eighteen  hundred  and  sixty-one,  that  the  Commissioner  of 
Patents  be,  and  he  is  hereby,  authorized,  whenever  the  revenue 
of  the  office  will  justify  him  in  so  doing,  to  pay  them  such 
sums,  in  addition  to  what  they  shall  already  have  received,  as 
will  make  their  compensation  the  same  as  it  was  at  that  time. 

SECTION  3.  And  be  it  further  enacted,  That  every  patent 
shall  be  dated  as  of  a  day  not  later  than  six  months  after  the 
time  at  which  it  was  passed  and  allowed,  and  notice  thereof 
sent  to  the  applicant  or  his  agent.  And  if  the  final  fee  for 


THE  PATENT  ACT  OF  1863.  607 

sucli  patent  be  not  paid  within  the  said  six  months,  the  patent 
shall  be  withheld,  and  the  invention  therein  described  shall 
become  public  property  as  against  the  applicant  therefor  :  Pro- 
vided^ That  in  all  cases  where  patents  have  been  allowed  previ- 
ous to  the  passage  of  this  act,  the  said  six  months  shall  be  reck- 
oned from  the  date  of  such  passage. 

APPROVED  March  3,  1863. 

Repealed  July  8,  1870.  16  Statutes  at  Large,  Chap.  230, 
Section  111,  p.  216. 

PATENT  ACT  OF  1864. 
13  STATUTES  AT  LARGE,  194. 

An  Act  amendatory  of  an  Act  to  amend  an  Act  entitled  "  An 
Act  to  promote  the  Progress  of  the  Useful  Arts,"  ap- 
proved March  three,  eighteen  hundred  and  sixty-three. 

Be  it  enacted  by  the  Senate  and  House  of  Representatives  of 
the  United  States  of  America  in  Congress  assembled,  That  any 
person  having  an  interest  in  an  invention,  whether  as  the  in- 
ventor or  assignee,  for  which  a  patent  was  ordered  to  issue 
upon  the  payment  of  the  final  fee,  as  provided  in  section 
three  of  an  act  approved  March  three,  eighteen  hnndred  and 
sixty-three,  but  who  has  failed  to  make  payment  of  the  final 
fee,  as  provided  by  said  act,  shall  have  the  right  to  make 
the  payment  of  such  fee,  and  receive  the  patent  withheld  on 
account  of  the  non-payment  of  said  fee,  provided  such  pay- 
ment be  made  within  six  months  from  the  date  of  the  passage 
of  this  act  :  Provided,  That  nothing  herein  shall  be  so  con- 
strued as  to  hold  responsible  in  damages  any  persons  who 
have  manufactured  or  used  any  article  or  thing  for  which  a 
patent,  as  aforesaid,  was  ordered  to  be  issued. 

APPROVED  June  25,  1864. 

Repealed  July  8,  1870.  16  Statutes  at  Large,  Chap.  230, 
Section  111,  p.  216. 


608  THE    PATENT    STATUTES. 

PATENT  ACT   OF  1865. 

13  STATUTES  AT  LARGE,  533. 

An  Act  amendatory  of  ' '  An  Act  to  amend  an  Act  entitled 
'An  Act  to  promote  the  Progress  of  the  useful  Arts,'  ap- 
proved March  three,  eighteen  hundred  and  sixty -three. ' ' 

Be  it  enacted  by  the  Senate  and  House  of  Representatives  of 
the  United  States  of  America  in  Congress  assembled,  That  any 
persons -having  an  interest  in  an  invention,  whether  as  inventor 
or  assignee,  for  which  a  patent  was  ordered  to  issue  upon  the 
payment  of  the  final  fee,  as  provided  in  section  three  of  an 
act  approved  March  three,  eighteen  hundred  and  sixty-three, 
but  who  has  failed  to  make  payment  of  the  final  fee  as  pro- 
vided in  said  act,  shall  have  the  right  to  make  an  application 
for  a  patent  for  his  invention,  the  same  as  in  the  case  of  an 
original  application,  provided  such  application  be  made  within 
two  years  after  the  date  of  the  allowance  of  the  original  appli- 
cation :  Provided,  That  nothing  herein  shall  be  so  construed 
as  to  hold  responsible  in  damages  any  persons  who  have  manu- 
factured or  used  any  article  or  thing  for  which  a  patent  afore- 
said was  ordered  to  issue.  This  act  shall  apply  to  all  cases  now 
in  the  Patent  Office,  and  also  to  such  as  shall  hereafter  be  filed. 
And  all  acts  or  parts  of  acts  inconsistent  with  this  act  are  here- 
by repealed. 

APPROVED  March  3,  1 865. 

Kepealed  July  8,  1870.  16  Statutes  at  Large,  Chap.  230, 
Section  111,  p.  216. 

PATENT   STATUTE   OF  1866. 

14  STATUTES  AT  LARGE,  76. 

An  Act  in  Amendment  of  an  Act  to  promote  the  Progress 
of  the  Useful  Arts,  and  the  Acts  in  Amendment  of  an 
Addition  thereto. 

Be  it  enacted  by  the  Senate  and  House  of  Representatives 
of  the  United  States  of  America  in  Congress  assembled,  That 
upon  appealing  for  the  first  time  from  the  decision  of  the 
primary  examiner  to  the  examiners-in-chief  in  the  Patent 


THE  PATENT  ACT  OF  1866.  609 

Office,  the  appellant  shall  pay  a  fee  of  ten  dollars  into  the 
Patent  Office,  to  the  credit  of  the  patent  fund  :  and  no  appeal 
from  the  primary  examiner  to  the  examinere-in-chief  shall 
hereafter  be  allowed  until  the  appellant  shall  pay  said  fee. 

APPROVED  June  27,  1866. 

Repealed  July  8,  1870.  16  Statutes  at  Large,  Chap.  230, 
Section  111,  p.  216. 

CONSOLIDATED  PATENT  ACT  OF  1870. 

16  STATUTES  AT  LARGE,  198. 

An  Act  to  revise,  consolidate,  and  amend  the  Statutes,  relating 
to  Patents  and  Copyrights. 

SECTION  1.  Be  it  enacted  by  the  Senate  and  House  of  Repre- 
sentatives of  the  United  States  of  America  in  Congress  assem- 
bled, That  there  shall  be  attached  to  the  Department  of  the 
Interior  the  office,  heretofore  established,  known  as  the  Patent 
Office,  wherein  all  records,  books,  models,  drawings,  specifi- 
cations, and  other  papers  and  things  pertain  ing  to  patents  shall 
be  safely  kept  and  preserved.  [See  Revised  Statutes,  Section 
475.] 

SECTION  2.  And  be  it  further  enacted,  That  the  officers  and 
employees  of  said  office  shall  continue  to  be  :  one  commissioner 
of  patents,  one  assistant  commissioner,  and  three  examiners-in- 
chief ,  to  be  appointed  by  the  President,  by  and  with  the  advice 
and  consent  of  the  Senate  ;  one  chief  clerk,  one  examiner  in 
charge  of  interferences,  twenty-two  principal  examiners, 
twenty-two  first  assistant  examiners,  twenty-two  second  assist- 
ant examiners,  one  librarian,  one  machinist,  five  clerks  of  class 
four,  six  clerks  of  class  three,  fifty  clerks  of  class  two,  forty- 
five  clerks  of  class  one,  and  one  messenger  and  purchasing 
clerk,  all  of  whom  shall  be  appointed  by  the  Secretary  of  the 
Interior,  upon  nomination  of  the  Commissioner  of  Patents. 
[See  Revised  Statutes,  Section  476.] 

SECTION  3.  And  be  it  further  enacted,  That  the  Secretary 
of  the  Interior  may  also  appoint,  upon  like  nomination,  such 
additional  clerks  of  classes  two  and  one,  and  of  lower  grades', 
copyists  of  drawings,  female  copyists,  skilled  laborers,  labor- 


610  THE    PATENT   STATUTES. 

ers  and  watchmen,  as  may  be  from  time  to  time  appropriated 
for  by  Congress.  [See  Revised  Statutes,  Section  169.] 

SECTION  4.  And  be  it  further  enacted,  That  the  annual  sal- 
aries of  the  officers  and  employees  of  the  Patent  Office  shall 
be  as  follows  : — 

Of  the  commissioner  of  patents,  four  thousand  five  hundred 
dollars. 

Of  the  assistant  commissioner,  three  thousand  dollars. 

Of  the  examiners-in-chief,  three  thousand  dollars  each. 

Of  the  chief  clerk,  two  thousand  five  hundred  dollars. 

Of  the  examiner  in  charge  of  interferences,  two  thousand 
five  hundred  dollars. 

Of  the  principal  examiners,  two  thousand  five  hundred 
dollars  each. 

Of  the  first  assistant  examiners,  one  thousand  eight  hun- 
dred dollars  each. 

Of  the  second  assistant  examiners,  one  thousand  six  hundred 
dollars  each. 

Of  the  librarian,  one  thousand  eight  hundred  dollars. 

Of  the  machinist,  one  thousand  six  hundred  dollars. 

Of  the  clerks  of  class  four,  one  thousand  .eight  hundred 
dollars  each. 

Of  the  clerks  of  class  three,  one  thousand  six  hundred  dol^ 
lars  each. 

Of  the  clerks  of  class  two,  one  thousand  four  hundred  dol- 
lars each. 

Of  the  clerks  of  class  one,  one  thousand  two  hundred  dollars 
each. 

Of  the  messenger  and  purchasing  clerk,  one  thousand  dollars. 

Of  laborers  and  watchmen,  seven  hundred  and  twenty  dol- 
lars each. 

Of  the  additional  clerks,  copyists  of  drawings,  female  copy- 
ists, and  skilled  laborers,  such  rates  as  may  be  fixed  by  the 
acts  making  appropriations  for  them.  [See  Eevised  Statutes, 
Sections  477,  440,  and  167.] 

SECTION  5.  And  be  it  further  enacted,  That  all  officers  and 
employees  of  the  Patent  Office  shall,  before  entering  upon 
their  duties,  make  oath  or  affirmation  truly  and  faithfully  to 


THE  PATENT  ACT  OF  1870.  611 

execute  the  trusts  committed  to  them.  [See  Revised  Statutes, 
Sections  1756  and  1757.] 

SECTION  6.  And  be  it  further  enacted,  That  the  commis- 
sioner and  chief  clerk,  before  entering  upon  their  duties,  shall 
severally  give  bond,  with  sureties,  to  the  Treasurer  of  the 
United  States,  the  former  in  the  sum  of  ten  thousand  dollars, 
and  the  latter  in  the  sum  of  five  thousand  dollars,  conditioned 
for  the  faithful  discharge  of  their  duties,  and  that  they  will 
render  to  the  proper  officers  of  the  treasury  a  true  account  of 
all  money  received  by  virtue  of  their  office.  [See  Revised 
Statutes,  Section  479.] 

SECTION  7.  And  be  it  further  enacted,  That  it  shall  be  the 
duty  of  the  commissioner,  under  the  direction  of  the  Secretary 
of  the  Interior,  to  superintend  or  perform  all  the  duties  respect- 
ing the  granting  and  issuing  of  patents  which  herein  are,  or  may 
hereafter  be,  by  law  directed  to  be  done  ;  and  he  shall  have 
charge  of  all  books,  records,  papers,  models,  machines,  and 
other  things  belonging  to  said  office.  [See  Revised  Statutes, 
Section  481.] 

SECTION  8.  And  be  it  further  enacted,  That  the  commis- 
sioner may  send  and  receive  by  mail,  free  of  postage,  letters, 
printed  matter,  and  packages  relating  to  the  business  of  his 
office,  including  Patent  Office  reports.  [See  19  Statutes  at 
Large,  Chap.  103,  Section  5,  p.  335  ;  and  20  Statutes  at 
Large,  Chap.  180,  Section  29,  p.  362.] 

SECTION  9.  And  be  it  further  enacted,  That  the  commis- 
sioner shall  lay  before  Congress,  in  the  month  of  January,  an- 
nually, a  report,  giving  a  detailed  statement  of  all  moneys  re- 
ceived for  patents,  for  copies  of  records  or  drawings,  or  from 
any  other  source  whatever  ;  a  detailed  statement  of  all  expen- 
ditures for  contingent  and  miscellaneous  expenses  ;  a  list  of  all 
patents  which  were  granted  during  the  preceding  year,  desig- 
nating under  proper  heads  the  subjects  of  such  patents  ;  an 
alphabetical  list  of  the  patentees,  with  their  places  of  resi- 
dence ;  a  list  of  all  patents  which  have  been  extended  during 
the  year  ;  and  such  other  information  of  the  condition  of  the 
Patent  Office  as  may  be  useful  to  Congress  or  the  public. 
[See  Revised  Statutes,  Section  494.] 


612  THE   PATENT    STATUTES. 

SECTION  10.  And  be  it  further  enacted,  That  the  examiners- 
in-chief  shall  be  persons  of  competent  legal  knowledge  and 
scientific  ability,  whose  duty  it  shall  be,  on  the  written  peti- 
tion of  the  appellant,  to  revise  and  determine  upon  the  valid- 
ity of  the  adverse  decisions  of  examiners  upon  applications  for 
patents,  and  for  reissues  of  patents,  and  in  interference  cases  ; 
and  when  required  by  the  commissioner,  they  shall  hear  and 
report  upon  claims  for  extensions,  and  perform  such  other  like 
duties  as  he  may  assign  them.  [See  Revised  Statutes,  Sec- 
tion 482.] 

SECTION  11.  And  be  it  further  enacted,  That  in  case  of  the 
death,  resignation,  absence,  or  sickness  of  the  commissioner, 
his  duties  shall  devolve  upon  the  assistant  commissioner  until 
a  successor  shall  be  appointed,  or  such  absence  or  sickness  shall 
cease.  [See  Revised  Statutes,  Sections  177,  178,  and  179.] 

SECTION  12.  And  be  it  further  enacted,  That  the  commis- 
sioner shall  cause  a  seal  to  be  provided  for  said  office,  with 
such  device  as  the  President  may  approve,  with  which  all  rec- 
ords or  papers  issued  from  said  office,  to  be  used  in  evidence, 
shall  be  authenticated.  [See  Revised  Statutes,  Section  478.] 

SECTION  13.  And  be  it  further  enacted,  That  the  commis- 
sioner shall  cause  to  be  classified  and  arranged  in  suitable 
cases,  in  the  rooms  and  galleries  provided  for  that  purpose, 
the  models,  specimens  of  composition,  fabrics,  manufactures, 
works  of  art,  and  designs,  which  have  been  or  shall  be  deposit- 
ed in  said  office  ;  and  said  rooms  and  galleries  shall  be  kept 
open  during  suitable  hours  for  public  inspection.  [See  Re- 
vised Statutes,  Section  484.] 

SECTION  14.  And  be  it  further  enacted,  That  the  commis- 
sioner may  restore  to  the  respective  applicants  such  of  the 
models  belonging  to  rejected  applications  as  he  shall  not  think 
necessary  to  be  preserved,  or  he  may  sell  or  otherwise  dispose 
of  them  after  the  application  has  been  finally  rejected  for  one 
year,  paying  the  proceeds  into  the  treasury,  as  other  patent 
moneys  are  directed  to  be  paid.  [See  Revised  Statutes,  Sec- 
tion 485.] 

SECTION  15.  And  be  it  further  enacted,  That  there  shall  be 
purchased,  for  the  use  of  said  office,  a  library  of  such  scien- 


THE  PATENT  ACT  OF  1870.  613 

tific  works  and  periodicals,  both  foreign  and  American,  as  may 
aid  the  officers  in  the  discharge  of  their  duties,  not  exceeding 
the  amount  annually  appropriated  by  Congress  for  that  pur- 
pose. [See  Revised  Statutes,  Section  48G.] 

SECTION  ]  6.  And  be  it  further  enacted,  That  all  officers 
and  employees  of  the  Patent  Office  shall  be  incapable,  during 
the  period  for  which  they  shall  hold  their  appointments,  to 
acquire  or  take,  directly  or  indirectly,  except  by  inheritance 
or  bequest,  any  right  or  interest  in  any  patent  issued  by  said 
office.  [See  Revised  Statutes,  Section  480.] 

SECTION  17.  And  be  it  further  enacted,  That  for  gross  mis- 
conduct the  commissioner  may  refuse  to  recognize  any  person 
as  a  patent  agent,  either  generally  or  in  any  particular  case  ; 
but  the  reasons  for  such  refusal  shall  be  duly  recorded,  and  be 
subject  to  the  approval  of  the  Secretary  of  the  Interior.  [See 
Revised  Statutes,  Section  487.] 

SECTION  18.  And  le  it  further  enacted,  That  the  commis- 
sioner may  require  all  papers  filed  in  the  Patent  Office,  if  not 
correctly,  legibly  and  clearly  written,  to  be  printed  at  the  cost 
of  the  party  filing  them.  [See  Revised  Statutes,  Section 
488.] 

SECTION  19.  And  be  it  further  enacted,  That  the  commis- 
sioner, subject  to  the  approval  of  the  Secretary  of  the  Interi- 
or, may  from  time  to  time  establish  rules  and  regulations,  not 
inconsistent  with  law,  for  the  conduct  of  proceedings  in  the 
Patent  Office.  [See  Revised  Statutes,  Section  483.] 

SECTION  20.  And  be  it  further  enacted,  That  the  commis- 
sioner may  print  or  cause  to  be  printed  copies  of  the  specifica- 
tions of  all  letters-patent  and  of  the  drawings  of  the  same,  and 
copies  of  the  claims  of  current  issues,  and  copies  of  such  laws, 
decisions,  rules,  regulations,  and  circulars  as  may  be  necessary 
for  the  information  of  the  public.  [See  Revised  Statutes, 
Sections  489,  490,  and  491.] 

SECTION  21.  And  be  it  further  enacted,  That  all  patents 
shall  be  issued  in  the  name  of  the  United  States  of  America, 
under  the  seal  of  the  Patent  Office,  and  shall  be  signed  by  the 
Secretary  of  the  Interior  and  countersigned  by  the  commis- 
sioner, and  they  shall  be  recorded,  together  with  the  specitica- 


614:  THE    PATENT    STATUTES. 

tion,  in  said  office,  in  books  to  be  kept  for  that  purpose.  [See 
Revised  Statutes,  Section  4883.] 

SECTION  22.  And  be  it  further  enacted,  That  every  patent 
shall  contain  a  short  title  or  description  of  the  invention  or  dis- 
covery, correctly  indicating  its  nature  and  design,  and  a  grant 
to  the  patentee,  his  heirs  or  assigns,  for  the  term  of  seventeen 
years,  of  the  exclusive  right  to  make,  use,  and  vend  the  said 
invention  or  discovery  throughout  the  United  States  and  the 
Territories  thereof,  referring  to  the  specification  for  the  par- 
ticulars thereof  ;  and  a  copy  of  said  specifications  and  of  the 
drawings  shall  be  annexed  to  the  patent  and  be  a  part  there- 
of. [See  Revised  Statutes,  Section  4884.] 

SECTION  23.  And  be  it  further  enacted,  That  every  patent 
shall  date  as  of  a  day  not  later  than  six  months  from  the  time 
at  which  it  was  passed  and  allowed,  and  notice  thereof  was 
sent  to  the  applicant  or  his  agent  ;  and  if  the  final  fee  shall 
not  be  paid  within  that  period,  the  patent  shall  be  withheld. 
[See  Revised  Statutes,  Section  4885.] 

SECTION  24.  And  be  it  further  enacted,  That  any  person 
who  has  invented  or  discovered  any  new  and  useful  art, 
machine,  manufacture,  or  composition  of  matter,  or  any  new 
and  useful  improvement  thereof,  not  known  or  used  by  others 
in  this  country,  and  not  patented,  or  described  in  any  printed 
publication  in  this  or  any  foreign  country,  before  his  inven- 
tion or  discovery  thereof,  and  not  in  public  use  or  on  sale  for 
more  than  two  years  prior  to  his  application,  unless  the  same 
is  proved  to  have  been  abandoned,  may,  upon  payment  of  the 
duty  required  by  law,  and  other  due  proceedings  had,  obtain 
a  patent  therefor.  [See  Revised  Statutes,  Section  488(3.] 

SECTION  25.  And  be  it  further  enacted,  That  no  person  shall 
be  debarred  from  receiving  a  patent  for  his  invention  or  dis- 
covery, nor  shall  any  patent  be  declared  invalid,  by  reason  of 
its  having  been  first  patented  or  caused  to  be  patented  in  a 
foreign  country  :  Provided,  The  same  shall  not  have  been 
introduced  into  public  use  in  the  United  States  for  more  than 
two  years  prior  to  the  application,  and  that  the  patent  shall 
expire  at  the  same  time  with  the  foreign  patent,  or,  if  there 
be  more  than  one,  at  the  same  time  with  the  one  having  the 


I 

THE  PATENT  ACT  OF  1870.  615 

shortest  term  ;  but  in  no  case  shall  it  be  in  force  more  than 
seventeen  years.  [See  Revised  Statutes,  Section  4887.] 

SECTION  26.  And  be  it  further  enacted,  That  before  any 
inventor  or  discoverer  shall  receive  a  patent  for  his  invention 
or  discovery,  he  shall  make  application  therefor,  in  writing, 
to  the  commissioner,  and  shall  tile  in  the  Patent  Office  a  writ- 
ten description  of  the  same,  and  of  the  manner  and  process  of 
making,  constructing,  compounding,  and  using  it,  in  such  full, 
clear,  concise,  and  exact  terms  as  to  enable  any  person  skilled 
in  the  art  or  science  to  which  it  appertains,  or  with  which  it  is 
most  nearly  connected,  to  make,  construct,  compound,  and 
use  the  same  ;  and  in  case  of  a  machine,  he  shall  explain  the 
principle  thereof,  and  the  best  mode  in  which  he  has  contem- 
plated applying  that  principle  so  as  to  distinguish  it  from  other 
inventions  ;  and  he  shall  particularly  point  tfut  and  distinctly 
claim  the  part,  improvement,  or  combination  which  he  claims 
as  his  invention  or  discovery  ;  and  said  specification  and  claim 
shall  be  signed  by  the  inventor  and  attested  by  two  witnesses. 
[See  Revised  Statutes,  Section  4888.] 

SECTION  27.  And  be  it  further  enacted,  That  when  the  na- 
ture of  the  case  admits  of  drawings,  the  applicant  shall  furnish 
one  copy  signed  by  the  inventor  or  his  attorney  in  fact,  and 
attested  by  two  witnesses,  which  shall  be  filed  in  the  Patent 
Office  ;  and  a  copy  of  said  drawings,  to  be  furnished  by  the 
Patent  Office,  shall  be  attached  to  the  patent  as  part  of  the 
specification.  [See  Revised  Statutes,  Section  4889.] 

SECTION  28.  And  be  it  further  enacted,  That  when  the  in- 
vention or  discovery  is  of  a  composition  of  matter,  the  appli- 
cant, if  required  by  the  commissioner,  shall  furnish  specimens 
of  ingredients  and  of  the  composition,  sufficient  in  quantity 
for  the  purpose  of  experiment.  [See  Revised  Statutes,  Sec- 
tion 4890.] 

SECTION  29.  And  be  it  further  enacted,  That  in  all  cases 
which  admit  of  representation  by  model,  the  applicant,  if  re- 
quired by  the  commissioner,  shall  furnish  one  of  convenient 
size  to  exhibit  advantageously  the  several  parts  of  his  inven- 
tion or  discovery.  [See  Revised  Statutes,  Section  4891.] 

SECTION  §0.  And  be  it  further  enacted,  That  the  applicant 


THE    PATENT   STATUTES. 

shall  make  oath  or  affirmation  that  he  does  verily  believe  him- 
self to  be  the  original  and  first  inventor  or  discoverer  of  the  art, 
machine,  manufacture,  composition,  or  improvement  for  which 
he  solicits  a  patent  ;  that  he  does  not  know  and  does  not 
believe  that  the  same  was  ever  before  known  or  used  ;  and 
shall  state  of  what  country  he  is  a  citizen.  And  said  oath  or 
affirmation  may  be  made  before  any  person  within  the  United 
States  authorized  by  law  to  administer  oaths,  or,  when  the  ap- 
plicant resides  in  a  foreign  country,  before  any  minister, 
charge  d"1  affaires,  consul,  or  commercial  agent,  holding  com- 
mission under  the  government  of  the  United  States,  or  before 
any  notary  public  of  the  foreign  country  in  which  the  appli- 
cant may  be.  [See  Revised  Statutes,  Section  4892.] 

SECTION  31.  And  be  it  further  enacted,  That  on  the  filing 
of  any  such  appli«ation  and  the  payment  of  the  duty  required 
by  law,  the  commissioner  shall  cause  an  examination  to  be 
made  of  the  alleged  new  invention  or  discovery  ;  and  if  on 
such  examination  it  shall  appear  that  the  claimant  is  justly  en- 
titled to  a  patent  under  the  law,  and  that  the  same  is  suffi- 
ciently useful  and  important,  the  commissioner  shall  issue  a 
patent  therefor.  [See  Revised  Statutes,  Section  4893.] 

SECTION  32.  And  be  it  further  enacted,  That  all  applica- 
tions for  patents  shall  be  completed  and  prepared  for  examina- 
tion within  two  years  after  the  filing  of  the  petition,  and  in 
default  thereof,  or  upon  failure  of  the  applicant  to  prosecute 
the  same  within  two  years  after  any  action  therein,  of  which 
notice  shall  have  been  given  to  the  applicant,  they  shall  be  re- 
garded as  abandoned  by  the  parties  thereto,  unless  it  be  shown 
to  the  satisfaction  of  the  commissioner  that  such  delay  was  un- 
avoidable. [See  Revised  Statutes,  Section  4894.] 

SECTION  33.  And  be  it  further  enacted,  That  patents  may 
be  granted  and  issued  or  reissued  to  the  assignee  of  the  invent- 
or or  discoverer,  the  assignment  thereof  being  first  entered 
of  record  in  the  Patent  Office  ;  but  in  such  case  the  applica- 
tion for  the  patent  shall  be  made  and  the  specifications  sworn 
to  by  the  inventor  or  discoverer  ;  and  also,  if  he  be  living,  in 
case  of  an  application  for  reissue.  [See  Revised  Statutes, 
Section  4895.] 


THE   PATENT    ACT   OF   1870.  617 

SECTION  34.  And  be  it  further  enacted,  That  when  any 
person,  having  made  any  new  invention  or  discovery  for  which 
a  patent  might  have  been  granted,  dies  before  a  patent  is 
granted,  the  right  of  applying  for  and  obtaining  the  patent 
shall  devolve  on  his  executor  or  administrator,  in  tmst  for  the 
heirs  at  law  of  the  deceased,  in  case  he  shall  have  died  intes- 
tate ;  or  if  he  shall  have  left  a  will,  disposing  of  the  same, 
then  in  trust  for  his  devisees,  in  as  full  manner  and  on  the 
same  terms  and  conditions  as  the  same  might  have  been 
claimed  or  enjoyed  by  him  in  his  lifetime  ;  and  when  the  ap- 
plication shall  be  made  by  such  legal  representatives,  the  oath 
or  affirmation  required  to  be  made  shall  be  so  varied  in  form 
that  it  can  be  made  by  them.  [See  Revised  Statutes,  Sec- 
tion 4896.] 

SECTION  35.  And  be  it  further  enacted,  That  any  person 
who  has  an  interest  in  an  invention  or  discovery,  whether  as 
inventor,  discoverer,  or  assignee,  for  which  a  patent  wae 
ordered  to  issue  upon  the  payment  of  the  final  fee,  but  who 
has  failed  to  make  payment  thereof  within  six  months  from 
the  time  at  which  it  was  passed  and  allowed,  and  notice  there- 
of was  sent  to  the  applicant  or  his  agent,  shall  have  a  right  to 
make  an  application  for  a  patent  for  such  invention  or  discov- 
ery the  same  as  in  the  case  of  an  original  application  :  Pro- 
vided, That  the  second  application  be  made  within  two  years 
after  the  allowance  of  the  original  application.  But  no  person 
shall  be  held  responsible  in  damages  for  the  manufacture  or 
use  of  any  article  or  thing  for  wliich  a  patent,  as  aforesaid, 
was  ordered  to  issue,  prior  to  the  issue  thereof  :  And  pro- 
vided further,  That  when  an  application  for  a  patent  has  been 
rejected  or  withdrawn,  prior  to  the  passage  of  this  act,  the  ap- 
plicant shall  have  six  months  from  the  date  of  such  passage  to 
renew  his  application,  or  to  file  a  new  one  ;  and  if  he  omit  to 
do  either,  his  application  shall  be  held  to  have  been  aban- 
doned. Upon  the  hearing  of  such  renewed  applications  aban- 
donment shall  be  considered  as  a  question  of  fact.  [See  Re- 
vised Statutes,  Section  4897.] 

SECTION  36.  And  be  it  further  enacted,  That  every  patent 
or  any  interest  therein  shall  be  assignable  in  law,  by  an  instru- 


618  THE   PATENT    STATUTES. 

ment  in  writing  ;  and  the  patentee  or  bis  assigns  or  legal 
representatives  may,  in  like  manner,  grant  and  convey  an  ex- 
clusive right  under  his  patent  to  the  whole  or  any  specified 
part  of  the  United  States  ;  and  said  assignment,  grant,  or  con- 
veyance shall  be  void  as  against  any  subsequent  purchaser  or 
mortgagee  for  a  valuable  consideration,  without  notice,  unless 
it  is  recorded  in  the  Patent  Office  within  three  months  from 
the  date  thereof.  [See  Revised  Statutes,  Section  4898.] 

SECTION  37.  And  be  it  further  enacted,  That  every  person 
who  may  have  purchased  of  the  inventor,  or  with  his  knowl- 
edge and  consent  may  have  constructed  any  newly  invented  or 
discovered  machine,  or  other  patentable  article,  prior  to  the 
application  by  the  inventor  or  discoverer  for  a  patent,  or  sold 
or  used  one  so  constructed,  shall  have  the  right  to  use,  and 
vend  to  others  to  be  used,  the  specific  thing  so  made  or  pur- 
chased, without  liability  therefor.  [See  Revised  Statutes,  Sec- 
tion 4899.] 

SECTION  38.  And  ~be  it  further  enacted,  That  it  shall  be  the 
duty  of  all  patentees,  and  their  assigns  and  legal  representa- 
tives, and  of  all  persons  making  or  vending  any  patented  arti. 
cle  for  or  under  them,  to  give  sufficient  notice  to  the  public 
that  the  same  is  patented,  either  by  fixing  thereon  the  word 
"  patented,"  together  with  the  day  and  year  the  patent  was 
granted  ;  or  when,  from  the  character  of  the  article,  this  can- 
not be  done,  by  fixing  to  it  or  to  the  package  wherein  one  or 
more  of  them  is  enclosed,  a  label  containing  the  like  notice  ; 
and  in  any  suit  for  infringement,  by  the  party  failing  so  to 
mark,  no  damages  shall  be  recovered  by  the  plaintiff,  except 
on  proof  that  the  defendant  was  duly  notified  of  the  infringe- 
ment, and  continued,  after  such  notice,  to  make,  use,  or  vend 
the  article  so  patented.  [See  Revised  Statutes,  Section 
4900.] 

SECTION  39.  And  he  it  further  enacted,  That  if  any  person 
shall,  in  any  manner,  mark  upon  any  thing  made,  used,  or 
sold  by  him  for  which  he  has  not  obtained  a  patent,  the  name 
or  any  imitation  of  the  name  of  any  person  who  has  obtained 
a  patent  therefor,  without  the  consent  of  such  patentee,  or  his 
assigns  or  legal  representatives  ;  or  shall  in  any  manner  mark 


THE  PATENT  ACT  OF  1870.  619 

upon  or  affix  to  any  such  patented  article  the  word  "  patent " 
or  "  patentee,"  or  the  words  "  letters-patent, "  or  any  word 
of  like  import,  with  intent  to  imitate  or  counterfeit  the  mark 
or  device  of  the  patentee,  without  having  the  license  or  con- 
sent  of  such  patentee  or  his  assigns  or  legal  representatives  ; 
or  shall  in  any  manner  mark  upon  or  affix  to  any  unpatented 
article  the  word  "  patent,"  or  any  word  importing  that  the 
same  is  patented,  for  the  purpose  of  deceiving  the  public,  ho 
shall  be  liable  for  every  such  offence  to  a  penalty  of  not  less 
than  one  hundred  dollars,  with  costs  ;  one  moiety  of  said 
penalty  to  the  person  who  shall  sue  for  the  same,  and  the  other 
to  the  use  of  the  United  States,  to  be  recovered  by  suit  in  any 
district  court  of  the  United  States  within  whose  jurisdiction 
such  offence  may  have  been  committed.  [See  Revised  Stat- 
utes, Section  4901.] 

SECTION  40.  And  be  it  further  enacted.  That  any  citizen  of 
the  United  States,  who  shall  have  made  any  new  invention  or 
discovery,  and  shall  desire  further  time  to  mature  the  same, 
may,  on  payment  of  the  duty  required  by  law,  file  in  the 
Patent  Office  a  caveat  setting  forth  the  design  thereof,  and  of 
its  distinguishing  characteristics,  and  praying  protection  of  his 
right  until  he  shall  have  matured  his  invention  ;  and  such 
caveat  shall  be  filed  in  the  confidential  archives  of  the  office 
and  preserved  in  secrecy,  and  shall  be  operative  for  the  term 
of  one  year  from  the  filing  thereof  ;  and  if  application  shall 
be  made  within  the  year  by  any  other  person  for  a  patent  with 
which  such  caveat  would  in  any  manner  interfere,  the  com- 
missioner shall  deposit  the  description,  specification,  draw- 
ings, and  model  of  such  application  in  like  manner  in  the  con- 
fidential archives  of  the  office,  and  give  notice  thereof,  by 
mail,  to  the  person  filing  the  caveat,  who,  if  he  would  avail 
himself  of  his  caveat,  shall  file  his  description,  specification, 
drawings,  and  model  within  three  months  from  the  time  of 
placing  said  notice  in  the  post-office  in  Washington,  with  the 
usual  time  required  for  transmitting  it  to  the  caveator  added 
thereto,  which  time  shall  be  indorsed  on  the  notice.  And  an 
alien  shall  have  the  privilege  herein  granted,  if  he  shall  have 
resided  in  the  United  States  one  year  next  preceding  the  filing 


620  THE    PATENT    STATUTES. 

of  his  caveat,  and  made  oath  of  his  intention  to  become  a  citi. 
zen.  [See  Revised  Statutes,  Section  4902.] 

SECTION  41.  And  be  it  further  enacted.  That  whenever,  on 
examination,  any  claim  for  a  patent  is  rejected  for  any  reason 
whatever,  the  commissioner  shall  notify  the  applicant  thereof, 
giving  him  briefly  the  reasons  for  such  rejection,  together  with 
such  information  and  references  as  may  be  useful  in  judging 
of  the  propriety  of  renewing  his  application  or  of  altering  his 
specification  ;  and  if,  after  receiving  such  notice,  the  applicant 
shall  persist  in  his  claim  for  a  patent,  with  or  without  altering 
his  specifications,  the  commissioner  shall  order  a  re-examina- 
tion of  the  case.  [See  Revised  Statutes,  Section  4903.] 

SECTION  42.  And  be  it  further  enacted.  That  whenever  an 
application  is  made  for  a  patent  which,  in  the  opinion  of  the 
commissioner,  would  interfere  with  any  pending  application, 
or  with  any  unexpired  patent,  he  shall  give  notice  thereof  to 
the  applicants,  or  applicant  and  patentee,  as  the  case  may  be, 
and  shall  direct  the  primary  examiner  to  proceed  to  determine 
the  question  of  priority  of  invention.  And  the  commissioner 
may  issue  a  patent  to  the  party  who  shall  be  adjudged  the 
prior  inventor,  unless  the  adverse  party  shall  appeal  from  the 
decision  of  the  primary  examiner,  or  of  the  board  of  examiners- 
in-chief,  as  the  case  may  be,  within  such  time,  not  less  than 
twenty  days,  as  the  commissioner  shall  prescribe.  [See  Re- 
vised Statutes,  Section  4904.] 

SECTION  43.  And  be  it  further  enacted,  That  the  commis- 
sioner may  establish  rales  for  taking  affidavits  and  depositions 
required  in  cases  pending  in  the  Patent  Office,  and  such  af- 
fidavits and  depositions  may  be  taken  before  any  officer  author- 
ized by  law  to  take  depositions  to  be  used  in  the  courts  of  the 
United  States,  or  of  the  State  where  the  officer  resides.  [See 
Revised  Statutes,  Section  4905.] 

SECTION  44.  And  be  it  further  enacted,  That  the  clerk  of 
any  court  of  the  United  States,  for  any  district  or  territory 
wherein  testimony  is  to  be  taken  for  use  in  any  contested  case 
pending  in  the  Patent  Office,  shall,  upon  the  application  of 
any  party  thereto,  or  his  agent  or  attorney,  issue  [a]  subprena 
for  any  witness  residing  or  being  within  said  district  or  terri' 


THE   PATENT   ACT   OF    1870.  621 

tory,  commanding  him  to  appear  and  testify  before  any  officer 
in  said  district  or  territory  authorized  to  take  depositions  and 
affidavits,  at  any  time  and  place  in  the  subpoena  stated  ;  and  if 
any  witness,  after  being  duly  served  with  such  subpoena,  shall 
neglect  or  refuse  to  appear,  or  after  appearing  shall  refuse  to 
testify,  the  judge  of  the  court  whose  clerk  issued  the  subpoena, 
may,  on  proof  of  such  neglect  or  refusal,  enforce  obedience  to 
the  process,  or  punish  the  disobedience  as  in  other  like  cases. 
[See  Revised  Statutes,  Sections  4906  and  4908.] 

SECTION  45.  And  be  it  further  enacted,  That  every  witness 
duly  subpoenaed  and  in  attendance  shall  be  allowed  the  same 
fees  as  are  allowed  to  witnesses  attending  the  courts  of  the 
United  States,  but  no  witness  shall  be  required  to  attend  at  any 
place  more  than  forty  miles  from  the  place  where  the  subpoena 
is  served  upon  him.  nor  be  deemed  guilty  of  contempt  for 
disobeying  such  subpoena,  unless  his  fees  and  travelling  ex- 
penses in  going  to,  returning  from,  and  one  day's  attendance 
at  the  place  of  examination,  are  paid  or  tendered  him  at  the 
time  of  the  service  of  the  subpoena  ;  nor  for  refusing  to  dis- 
close any  secret  invention  or  discovery  made  or  owned  by  him- 
self. [See  Revised  Statutes,  Sections  4906,  4907,  and 
4908.] 

SECTION  46.  And  be  it  further  enacted.  That  every  appli- 
cant for  a  patent  or  the  reissue  of  a  patent,  any  of  the  claims 
of  which  have  been  twice  rejected,  and  every  party  to  an  in- 
terference, may  appeal  from  the  decision  of  the  primary  ex- 
aminer, or  of  the  examiner  in  charge  of  interference[s],  in 
such  case  to  the  board  of  examiners-in-chief,  having  once  paid 
the  fee  for  such  appeal  provided  by  law.  [See  Revised  Stat- 
utes, Section  4909.] 

SECTION  47.  And  be  it  further  enacted,  That  if  such  party 
is  dissatisfied  with  the  decision  of  the  examiners-in-chief,  he 
may,  on  payment  of  the  duty  required  by  law,  appeal  to  the 
commissioner  in  person.  [See  Revised  Statutes,  Section 
4910.] 

SECTION  48.  And  be  it  further  enacted.  That  if  such  party, 
except  a  party  to  an  interference,  is  dissatisfied  with  the  deci- 
sion of  the  commissioner,  he  may  appeal  to  the  Supreme  Court 


622  THE    PATENT    STATUTES. 

of  the  District  of  Columbia,  sitting  in  bane.  [See  Revised 
Statutes,  Section  4911.] 

SECTION  49.  And  be  it  further  enacted.  That  when  an  ap- 
peal is  taken  to  the  Supreme  Court  of  the  District  of  Colum- 
bia, the  appellant  shall  give  notice  thereof  to  the  commis- 
sioner, and  file  in  the  Patent  Office,  within  such  time  as  the 
commissioner  shall  appoint,  his  reasons  of  appeal,  specifically 
set  forth  in  writing.  [See  Revised  Statutes,  Section  4912.] 

SECTION  50.  And  be  it  further  enacted.  That  it  shall  be  the 
duty  of  said  court,  on  petition,  to  hear  and  determine  such 
appeal,  and  to  revise  the  decision  appealed  from  in  a  summary 
way,  on  the  evidence  produced  before  the  commissioner,  at 
such  early  and  convenient  time  as  the  court  may  appoint, 
notifying  the  commissioner  of  the  time  and  place  of  hearing  ; 
and  the  revision  shall  be  confined  to  the  points  set  forth  in  the 
reasons  of  appeal.  And  after  hearing  the  case,  the  court  shall 
return  to  the  commissioner  a  certificate  of  its  proceedings  and 
decision,  which  shall  be  entered  of  record  in  the  Patent 
Office,  and  govern  the  further  proceedings  in  the  case.  But 
no  opinion  or  decision  of  the  court  in  any  such  case  shall  pre- 
clude any  person  interested  from  the  right  to  contest  the 
validity  of  such  patent  in  any  court  wherein  the  same  may  be 
called  in  question.  [See  Revised  Statutes,  Section  4914.] 

SECTION  51.  And  be  it  further  enacted,  That  on  receiving 
notice  of  the  time  and  place  of  hearing  such  appeal,  the  com- 
missioner shall  notify  all  parties  who  appear  to  be  interested 
therein  in  such  manner  as  the  court  may  prescribe.  The 
party  appealing  shall  lay  before  the  court  certified  copies  of  all 
the  original  papers  and  evidence  in  the  case,  and  the  commis- 
sioner shall  furnish  it  with  the  grounds  of  his  decision,  fully 
set  forth  in  writing,  touching  all  the  points  involved  by  the 
reasons  of  appeal.  And  at  the  request  of  any  party  interested, 
or  of  the  court,  the  commissioner  and  the  examiners  may  be 
examined  under  oath,  in  explanation  of  the  principles  of  the 
machine  or  other  thing  for  which  a  patent  is  demanded.  [See 
Revised  Statutes,  Section  4913.] 

SECTION  52.  And  be  it  further  enacted,  That  whenever  a 
patent  on  application  is  refused,  for  any  reason  whatever, 


THE  PATENT  ACT  OF  1870.  623 

either  by  the  commissioner  or  by  the  Supreme  Court  of  the 
District  of  Columbia  upon  appeal  from  the  commissioner,  the 
applicant  may  have  remedy  by  bill  in  equity  ;  and  the  court 
having  cognizance  thereof,  on  notice  to  a'dverse  parties  and 
other  due  proceedings  had,  may  adjudge  that  such  applicant 
is  entitled,  according  to  law,  to  receive  a  patent  for  his  inven- 
tion, as  specified  in  his  claim,  or  for  any  part  thereof,  as  the 
facts  in  the  case  may  appear.  And  such  adjudication,  if  it  be 
in  favor  of  the  right  of  the  applicant,  shall  authorize  the  com- 
missioner to  issue  such  patent,  on  the  applicant  filing  in  the 
Patent  Office  a  copy  of  the  adjudication,  and  otherwise  com- 
plying with  the  requisitions  of  law.  And  in  all  cases  where 
there  is  no  opposing  party  a  copy  of  the  bill  shall  be  served  on 
the  commissioner,  and  all  the  expenses  of  the  proceeding  shall 
be  paid  by  the  applicant,  whether  the  final  decision  is  in  his 
favor  or  not.  [See  Revised  Statutes,  Section  4915.] 

SECTION  53.  And  be  it  further  enacted,  That  whenever  any 
patent  is  inoperative  or  invalid,  by  reason  of  a  defective  or  in- 
sufficient specification,  or  by  reason  of  the  patentee  claiming 
as  his  own  invention  or  discovery  more  than  he  had  a  right  to 
claim  as  new,  if  the  error  has  arisen  by  inadvertence,  accident, 
or  mistake,  and  without  any  fraudulent  or  deceptive  inten- 
tion, the  commissioner  shall,  on  the  surrender  of  such  a  pat- 
ent and  the  payment  of  the  duty  required  by  law,  cause  a  new 
patent  for  the  same  invention,  and  in  accordance  with  the  cor- 
rected specification,  to  be  issued  to  the  patentee,  or,  in  the 
case  of  his  death  or  assignment  of  the  whole  or  any  undivided 
part  of  ihe  original  patent,  to  his  executors,  administrators,  or 
assigns,  for  the  unexpired  part  of  the  term  of  the  original  pat- 
ent, the  surrender  of  which  shall  take  effect  upon  the  issue  of 
the  amended  patent  ;  and  the  commissioner  may,  in  his  dis- 
cretion, cause  several  patents  to  be  issued  for  distinct  and 
separate  parts  of  the  thing  patented,  upon  demand  of  the  ap- 
plicant, and  upon  payment  of  the  required  fee  for  a  reissue 
for  each  of  such  reissued  letters-patent.  And  the  specifica- 
tions and  claim  in  every  such  case  shall  be  subject  to  revision 
and  restriction  in  the  same  manner  as  original  applications  are. 
And  the  patent  so  reissued,  together  with  the  corrected  speci- 


624  THE   PATENT    STATUTES. 

fication,  shall  have  the  effect  and  operation  in  law,  on  the  trial 
of  all  actions  for  causes  thereafter  arising,  as  though  the  same 
had  been  originally  filed  in  such  corrected  form  ;  but  no  new 
matter  shall  be  introduced  into  the  specification,  nor  in  case  of 
a  machine  patent  shall  the  model  or  drawings  be  amended, 
except  each  by  the  other  ;  but  when  there  is  neither  model 
nor  drawing,  amendments  may  be  made  upon  proof  satisfac- 
tory to  the  commissioner  that  such  new  matter  or  amendment 
was  a  part  of  the  original  invention,  and  was  omitted  from  the 
specification  by  inadvertence,  accident,  or  mistake,  as  afore- 
said. [See  Revised  Statutes,  Section  4916.] 

SECTION  54.  And  1)6  it  further  enacted,  That  whenever, 
through  inadvertence,  accident,  or  mistake,  and  without  any 
fraudulent  or  deceptive  intention,  a  patentee  has  claimed  more 
than  that  of  which  he  was  the  original  or  first  inventor  or  dis- 
coverer, his  patent  shall  be  valid  for  all  that  part  which  is 
truly  and  justly  his  own,  provided  the  same  is  a  material  or 
substantial  part  of  the  thing  patented  ;  and  any  such  patentee, 
his  heirs  or  assigns,  whether  of  the  whole  or  any  sectional  in- 
terest therein,  may,  on  payment  of  the  duty  required  by  law, 
make  disclaimer  of  such  parts  of  the  thing  patented  as  he  shall 
not  choose  to  claim  or  to  hold  by  virtue  of  the  patent  or  as- 
signment, stating  therein  the  extent  of  his  interest  in  such 
patent ;  said  disclaimer  shall  be  in  writing,  attested  by  one  or 
more  witnesses,  and  recorded  in  the  Patent  Office,  and  it  shall 
thereafter  be  considered  as  part  of  the  original  specification  to 
the  extent  of  the  interest  possessed  by  the  claimant  and  by 
those  claiming  under  him  after  the  record  thereof.  But  no 
such  disclaimer  shall  affect  any  action  pending  at  the  time  of 
its  being  filed,  except  so  far  as  may  relate  to  the  question  of 
unreasonable  neglect  or  delay  in  filing  it.  [See  Revised  Stat- 
utes, Section  4917.] 

SECTION  55.  And  be  it  further  enacted,  That  all  actions, 
suits,  controversies,  and  cases  arising  under  the  patent  laws  of 
the  United  States  shall  be  originally  cognizable,  as  well  in 
equity  as  at  law,  by  the  circuit  courts  of  the  United  States,  or 
any  district  court  having  the  powers  and  jurisdiction  of  a  cir- 
cuit court,  or  by  the  Supreme  Court  of  the  District  of  Colum- 


THE  PATENT  ACT  OF  1870.  625 

bia,  or  of  any  territory  ;  and  the  court  shall  have  power,  upon 
bill  in  equity  filed  by  any  party  aggrieved,  to  grant  injunc- 
tions according  to  the  course  and  principles  of  courts  of 
equity,  to  prevent  the  violation  of  any  right  secured  by 
patent,  on  such  terms  as  the  court  may  deem  reasonable  ;  and 
upon  a  decree  being  rendered  in  any  such  case  for  an  infringe- 
ment, the  claimant  [complainant]  shall  be  entitled  to  recover, 
in  addition  to  the  profits  to  be  accounted  for  by  the  defend- 
ant, the  damages  the  complainant  has  sustained  thereby,  and 
the  court  shall  assess  the  same  or  cause  the  same  to  be  assessed 
under  its  direction,  and  the  court  shall  have  the  same  powers 
to  increase  the  same  in  its  discretion  that  are  given  by  this  act 
to  increase  the  damages  found  by  verdicts  in  actions  upon  the 
case  ;  but  all  actions  shall  be  brought  during  the  term  for 
which  the  letters-patent  shall  be  granted  or  extended,  or  with- 
in six  years  after  the  expiration  thereof.  [See  Revised  Stat- 
utes, Section  629,  1  9,  and  Section  4921.] 

SECTION  56.  And  be  it  further  enacted,  That  a  writ  of 
error  or  appeal  to  the  Supreme  Court  of  the  United  States 
shall  lie  from  all  judgments  and  decrees  of  any  circuit  court, 
or  of  any  district  court  exercising  the  jurisdiction  of  a  circuit 
court,  or  of  the  Supreme  Court  of  the  District  of  Columbia, 
or  of  any  Territory,  in  any  action,  suit,  controversy,  or  case,  at 
law  or  in  equity,  touching  patent  rights,  in  the  same  manner 
and  under  the  same  circumstances  as  in  other  judgments  and 
decrees  of  such  circuit  courts,  without  regard  to  the  sum  or 
value  in  controversy.  [See  Revised  Statutes,  Section  699.] 

SECTION  57.  And  be  it  further  enacted,  That  written  or 
printed  copies  of  any  records,  books,  papers,  or  drawings  be- 
longing to  the  Patent  Office,  and  of  letters-patent  under  the 
signature  of  the  commissioner  or  acting  commissioner,  with 
the  seal  of  office  affixed,  shall  be  competent  evidence  in  all 
cases  wherein  the  originals  could  be  evidence,  and  any  person 
making  application  therefor,  and  paying  the  fee  required  by 
law,  shall  have  certified  copies  thereof.  And  copies  of  the 
specifications  and  drawings  of  foreign  letters-patent,  certified 
in  like  manner,  shall  be  prima  facie  evidence  of  the  fact  of 
the  granting  of  such  foreign  letters-patent,  and  of  the  date 


THE    1'ATENT   STATUTES. 

and  contents  thereof.     [See  Revised  Statutes,   Sections  892 
and  893.] 

SECTION  58.  And  be  it  further  enacted,  That  whenever 
there  shall  be  interfering  patents,  any  person  interested  in  any 
one  of  such  interfering  patents,  or  in  the  working  of  the  in- 
vention claimed  under  either  of  such  patents,  may  have  relief 
against  the  interfering  patentee,  and  all  parties  interested 
under  him,  by  suit  in  equity  against  the  owners  of  the  inter- 
fering patent  ;  and  the  court  having  cognizance  thereof,  as 
hereinbefore  provided,  on  notice  to  adverse  parties,  and  other 
due  proceedings  had  according  to  the  course  of  equity,  may 
adjudge  and  declare  either  of  the  patents  void  in  whole  or  in 
part,  or  inoperative,  or  invalid  in  any  particular  part  of  the 
United  States,  according  to  the  interest  of  the  parties  in  the 
patent  or  the  invention  patented.  But  no  such  judgment  or 
adjudication  shall  affect  the  rights  of  any  person  except  the 
parties  to  the  suit  and  those  deriving  title  under  them  subse- 
quent to  the  rendition  of  such  judgment.  [See  Revised  Stat- 
utes, Section  4918.] 

SECTION  59.  And  be  it  further  enacted,  That  damages  for 
the  infringement  of  any  patent  may  be  recovered  by  action  on 
the  case  in  any  circuit  court  of  the  United  States,  or  district 
court  exercising  the  jurisdiction  of  a  circuit  court,  or  in  the 
Supreme  Court  of  the  District  of  Columbia,  or  of  any  Terri- 
tory, in  the  name  of  the  party  interested,  either  as  patentee, 
assignee,  or  grantee.  And  whenever  in  any  such  action  a 
verdict  shall  be  rendered  for  the  plaintiff,  the  court  may  enter 
judgment  thereon  for  any  sum  above  the  amount  found  by  the 
verdict  as  the  actual  damages  sustained,  according  to  the  cir- 
cumstances of  the  case,  not  exceeding  three  times  the  amount 
of  such  verdict,  together  with  the  costs.  [See  Revised  Stat- 
utes, Section  629,  1"  9,  and  Section  4919.] 

SECTION  60.  And  ~be  it  further  enacted,  That  whenever, 
through  inadvertence,  accident,  or  mistake,  and  without  any 
wil[l]ful  default  or  intent  to  defraud  or  mislead  the  public,  a 
patentee  shall  have  (in  his  specification)  claimed  to  be  the 
original  and  first  inventor  or  discoverer  of  any  material  or 
substantial  part  of  the  thing  patented,  of  which  he  wajs  not  the 


THE  PATENT  ACT  OF  1870.  627 

original  and  first  inventor  or  discoverer  as  aforesaid,  every  such 
patentee,  his  executors,  administrators,  and  assigns,  whether 
of  the  whole  or  any  sectional  interest  in  the  patent,  may  main- 
tain a  suit  at  law  or  in  equity,  for  the  infringement  of  any 
part  thereof,  which  was  bona  fide  his  own,  provided  it  shall 
be  a  material  and  substantial  part  of  the  thing  patented,  and 
be  definitely  distinguishable  from  the  parts  so  claimed,  with- 
out right  as  aforesaid,  notwithstanding  the  specifications  may 
embrace  more  than  that  of  which  the  patentee  was  the  origi- 
nal or  first  inventor  or  discoverer.  But  in  every  such  case  in 
which  a  judgment  or  decree  shall  be  rendered  for  the  plaintiff, 
no  costs  shall  be  recovered  unless  the  proper  disclaimer  has 
been  entered  at  the  Patent  Office  before  the  commencement 
of  the  suit  ;  nor  shall  lie  be  entitled  to  the  benefits  of  this 
section  if  he  shall  have  unreasonably  neglected  or  delayed 
to  enter  said  disclaimer.  [See  Revised  Statutes,  Section 
4922.] 

SECTION  61.  And  be  it  further  enacted,  That  in  any  action 
for  infringement  the  defendant  may  plead  the  general  issue, 
and  having  given  notice  in  writing  to  the  plaintiff  or  his  at- 
torney, thirty  days  before,  may  prove  on  trial  any  one  or  more 
of  the  following  special  matters  : — 

First.  That  for  the  purpose  of  deceiving  the  public  the  de- 
scription and  specification  filed  by  the  patentee  in  the  Patent 
Office  was  made  to  contain  less  than  the  whole  truth  relative 
to  his  invention  or  discovery,  or  more  than  is  necessary  to 
produce  the  desired  effect ;  or, 

Second.  That  he  had  surreptitiously  or  unjustly  obtained 
the  patent  for  that  which  was  in  fact  invented  by  another, 
who  \vas  using  reasonable  diligence  in  adapting  and  perfecting 
the  same  ;  or, 

Third.  That  it  had  been  patented  or  described  in  some 
printed  publication  prior  to  his  supposed  invention  or  discov- 
ery thereof  ;  or, 

Fourth.  That  he  was  not  the  original  and  first  inventor  or 
discoverer  of  any  material  and  substantial  part  of  the  thing 
patented  ;  or, 

Fifth.   That  it  had  been  in  public  use  or  on  sale  in  this 


628  THE    PATENT    STATUTES. 

country,  for  more  than  two  years  before  his  application  for  a 
patent,  or  had  been  abandoned  to  the  public. 

And  in  notices  as  to  proof  of  previous  invention,  knowledge, 
or  use  of  the  thing  patented,  the  defendant  shall  state  the 
names  of  patentees  and  the  dates  of  their  patents,  and  when 
granted,  and  the  names  and  residences  of  the  persons  alleged 
to  have  invented,  or  to  have  had  the  prior  knowledge  of  the 
thing  patented,  and  where  and  by  whom  it  had  been  used  ; 
and  if  any  one  or  more  of  the  special  matters  alleged  shall  be 
found  for  the  defendant,  judgment  shall  be  rendered  for  him 
with  costs.  And  the  like  defences  may  be  pleaded  in  any  suit 
in  equity  for  relief  against  an  alleged  infringement ;  and 
proofs  of  the  same  may  be  given  upon  like  notice  in  the  an- 
swer of  the  defendant,  and  with  the  like  effect.  [See  Re- 
vised Statutes,  Section  4920.] 

SECTION  62.  And  be  it  further  enacted,  That  whenever  it 
shall  appear  that  the  patentee,  at  the  time  of  making  his  appli- 
cation for  the  patent,  believed  himself  to  be  the  original  and 
first  inventor  or  discoverer  of  the  thing  patented,  the  same 
shall  not  be  held  to  be  void  on  account  of  the  invention  or 
discovery,  or  any  part  thereof,  having  been  known  or  used  in 
a  foreign  country,  before  his  invention  or  discovery  thereof, 
if  it  had  not  been  patented  or  described  in  a  printed  publica- ' 
tion.  [See  Revised  Statutes,  Section  4923.] 

SECTION  63.  And 'be  it  further  enacted,  That  where  the  pat- 
entee of  any  invention  or  discovery,  the  patent  for  which  was 
granted  prior  to  the  second  day  of  March,  eighteen  hundred 
and  sixty-one,  shall  desire  an  extension  of  his  patent  beyond 
the  original  term  of  its  limitation,  he  shall  make  application 
therefor,  in  writing,  to  the  commissioner,  setting  forth  the 
reasons  why  such  extension  should  be  granted  ;  and  he  shall 
also  furnish  a  written  statement  under  oath  of  the  ascertained 
value  of  the  invention  or  discovery,  and  of  his  receipts  and 
expenditures  on  account  thereof,  sufficiently  in  detail  to  ex- 
hibit a  true  and  faithful  account  of  the  loss  and  profit  in  any 
manner  accruing  to  him  by  reason  of  said  invention  or  discov- 
ery. And  said  application  shall  be  filed  not  more  than  six 
months  nor  less  than  ninety  days  before  the  expiration  of  the 


THE    PATENT   ACT   OF    1870.  629 

original  term  of  the  patent  ;  and  no  extension  shall  be  granted 
after  the  expiration  of  said  original  term.  [See  Revised  Stat- 
utes, Section  4924.] 

SECTION  64.  And  be  it  further  enacted,  That  upon  the  re- 
ceipt of  such  application,  and  the  payment  of  the  duty  re- 
quired by  law,  the  commissioner  shall  cause  to  be  published  in 
one  newspaper  in  the  city  of  Washington,  and  in  such  other 
papers  published  in  the  section  of  the  country  most  interested 
adversely  to  the  extension  of  the  patent  as  he  may  deem 
proper,  for  at  least  sixty  days  prior  to  the  day  set  for  hearing 
the  case,  a  notice  of  such  application,  and  of  the  time  and 
place  when  and  where  the  same  will  be  considered,  that  any 
person  may  appear  and  show  cause  why  the  extension  should 
not  be  granted.  [See  Revised  Statutes,  Section  4925.] 

SECTION  65.  And  be  it  further  enacted,  That  on  the  publica- 
tion of  such  notice,  the  commissioner  shall  refer  the  case  to 
the  principal  examiner  having  charge  of  the  class  of  inventions 
to  which  it  belongs,  who  shall  make  to  said  commissioner  a 
full  report  of  the  case,  and  particularly  whether  the  invention 
or  discovery  was  new  and  patentable  when  the  original  patent 
was  granted.  [See  Revised  Statutes,  Section  4926.] 

SECTION  66.  And  be  it  further  enacted,  That  the  commis- 
sioner shall,  at  the  time  and  place  designated  in  the  published 
notice,  hear  and  decide  upon  the  evidence  produced,  both  for 
and  against  the  extension  ;  and  if  it  shall  appear  to  his  satis- 
faction that  the  patentee,  without  neglect  or  fault  on  his  part, 
has  failed  to  obtain  from  the  use  and  sale  of  his  invention  or 
discovery,  a  reasonable  remuneration  for  the  time,  ingenuity, 
and  expense  bestowed  upon  it,  and  the  introduction  of  it  into 
use,  and  that  it  is  just  and  proper,  having  due  regard  to  the 
public  interest,  that  the  term  of  the  patent  should  be  extended, 
the  said  commissioner  shall  make  a  certificate  thereon,  renew- 
ing and  extending  the  said  patent  for  the  term  of  seven  years 
from  the  expiration  of  the  first  term,  which  certificate  shall  be 
recorded  in  the  Patent  Office,  and  thereupon  the  said  patent 
shall  have  the  same  effect  in  law  as  though  it  had  been  origi- 
nally granted  for  twenty-one  years.  [See  Revised  Statutes, 
Section  4927.] 


630  THE    PATENT    STATUTES. 

SECTION  67.  And  be  it  further  enacted,  That  the  benefit 
of  the  extension  of  a  patent  shall  extend  to  the  assignees  and 
grantees  of  the  right  to  use  the  thing  patented  to  the  extent 
of  their  interest  therein.  [See  Revised  Statutes,  Section  4928.] 

SECTION  68.  And  be  it  further  enacted,  That  the  following 
shall  be  the  rates  for  patent  fees  : — 

On  filing  each  original  application  for  a  patent,  fifteen 
dollars. 

On  issuing  each  original  patent,  twenty  dollars. 

On  filing  each  caveat,  ten  dollars. 

On  every  application  for  the  reissue  of  a  patent,  thirty 
dollars. 

On  filing  each  disclaimer,  ten  dollars. 

On  every  application  for  the  extension  of  a  patent,  fifty 
dollars. 

On  the  granting  of  every  extension  of  a  patent,  fifty  dollars. 

On  an  appeal  for  the  first  time  from  the  primary  examiners 
to  the  examiners-in-chief,  ten  dollars. 

On  every  appeal  from  the  examiners-in-chief  to  the  com- 
missioner, twenty  dollars. 

For  certified  copies  of  patents  and  other  papers,  ten  cents 
per  hundred  words. 

For  recording  every  assignment,  agreement,  power  of  at- 
torney, or  other  paper,  of  three  hundred  words  or  under,  one 
dollar  ;  of  over  three  hundred  and  under  one  thousand  words, 
two  dollars  ;  of  over  one  thousand  words,  three  dollars. 

For  copies  of  drawings,  the  reasonable  cost  of  making  them. 
[See  Revised  Statutes,  Section  4934.] 

SECTION  69.  And  be  it  further  enacted,  That  patent  fees 
may  be  paid  to  the  commissioner,  or  to  the  treasurer  or  any  of 
the  assistant  treasurers  of  the  United  States,  or  to  any  of  the 
designated  depositaries,  national  banks,  or  receivers  of  public 
money,  designated  by  the  Secretary  of  the  Treasury  for  that 
purpose,  who  shall  give  the  depositor  a  receipt  or  certificate 
of  deposit  therefor.  And  all  money  received  at  the  Patent 
Office,  for  any  purpose,  or  from  any  source  whatever,  shall  be 
paid  into  the  treasury  as  received,  without  any  deduction 
whatever  ;  and  all  disbursements  for  said  office  shall  be  made 


THE  PATENT  ACT  OF  1870.  631 

by  the  disbursing  clerk  of  the  Interior  Department.  [See 
Revised  Statutes,  Sections  496  and  4935.] 

SECTION  7<X  And  ~be  it  further  enacted,  That  the  Treasurer 
of  the  United  States  is  authorized  to  pay  back  any  sum  or 
sums  of  money  to  any  person  who  shall  have  paid  the  same 
into  the  treasury,  or  to  any  receiver  or  depositary,  to  the 
credit  of  the  treasurer,  as  for  fees  accruing  at  the  Patent  Office 
through  mistake,  certificate  thereof  being  made  to  said  treas- 
urer by  the  Commissioner  of  Patents.  [See  Revised  Statutes, 
Section  4936.] 

SECTION  71.  And  be  it  further  enacted,  That  any  person 
who,  by  his  own  industry,  genius,  efforts,  and  expense,  lias 
invented  or  produced  any  new  and  original  design  for  a  manu- 
facture, bust,  statue,  alto-relievo,  or  bas-relief  ;  any  new  and 
original  design  for  the  printing  of  wool[l]en,  silk,  cotton,  or 
other  fabrics  ;  any  new  and  original  impression,  ornament, 
pattern,  print,  or  picture,  to  be  printed,  painted,  cast,  or 
otherwise  placed  on  or  worked  into  any  article  of  manufact- 
ure ;  or  any  new.  useful,  and  original  shape  or  configuration 
of  any  article  of  manufacture,  the  same  not  having  been 
known  or  used  by  others  before  his  invention  or  production 
thereof,  or  patented  or  described  in  any  printed  publication, 
may,  upon  payment  of  the  duty  required  by  law,  and  other 
due  proceedings  had  the  same  as  in  cases  of  inventions  or  dis- 
coveries, obtain  a  patent  therefor.  [See  Revised  Statutes, 
Section  4929.] 

SECTION  72.  And  be  it  further  enacted,  That  the  commis- 
sioner may  dispense  with  models  of  designs  when  the  design 
can  be  sufficiently  represented  by  drawings  or  photographs. 
[See  Revised  Statutes,  Section  4930.] 

SECTION  73.  And  be  it  further  enacted,  That  patents  for 
designs  may  be  granted  for  the  term  of  three  years  and  six 
months,  or  for  seven  years,  or  for  fourteen  years,  as  the  appli- 
cant may,  in  his  application,  elect.  [See  Revised  Statutes, 
Section  4931.] 

SECTION  74.  And  be  it  further  enacted,  That  patentees  of 
designs  issued  prior  to  March  two,  eighteen  hundred  and  sixty- 
one,  shall  be  entitled  to  extension  of  tbeir  respective  patents 


THE   PATENT    STATUTES. 

for  the  term  of  seven  years,  in  the  same  manner  and  under  the 
same  restrictions  as  are  provided  for  the  extension  of  patents 
for  inventions  or  discoveries  issued  prior  to  the  second  day  of 
March,  eighteen  hundred  and  sixty- one.  [See  Re  vised  Stat- 
utes, Section  4932.] 

SECTION  75.  And  be  it  further  enacted,  That  the  following 
shall  be  the  rates  of  fees  in  design  cases  : — 

For  three  years  and  six  months,  ten  dollars. 

For  seven  years,  fifteen  dollars. 

For  fourteen  years,  thirty  dollars. 

For  all  other  cases  in  which  fees  are  required,  the  same 
rates  as  in  cases  of  inventions  or  discoveries.  [See  Revised 
Statutes,  Section  4934.] 

SECTION  76.  And  be  it  further  enacted,  That  all  the  regula- 
tions and  provisions  which  apply  to  the  obtaining  or  protection 
of  patents  for  inventions  or  discoveries,  not  inconsistent  with 
the  provisions  of  this  act,  shall  apply  to  patents  for  designs. 
[See  Revised  Statutes,  Section  4933.] 

[Sections  77  to  110,  inclusive,  refer  to  trade-marks  and  copy- 
rights, and  not  to  patents.] 

SECTION  111.  And  be  it  further  enacted,  That  the  acts  and 
parts  of  acts  set  forth  in  the  schedule  of  acts  cited,  hereto  an- 
nexed, are  hereby  repealed,  without  reviving  any  acts  or  parts 
of  acts  repealed  by  any  of  said  acts,  or  by  any  clause  or  pro- 
visions therein  :  Provided,  however,  That  the  repeal  hereby 
enacted  shall  not  affect,  impair,  or  take  away  any  right  exist- 
ing under  any  of  said  laws  ;  but  all  actions  and  causes  of  ac- 
tion, both  in  law  or  in  equity,  which  have  arisen  under  any  of 
said  laws,  may  be  commenced  and  prosecuted,  and  if  already 
commenced  may  be  prosecuted  to  final  judgment  and  execu- 
tion, in  the  same  manner  as  though  this  act  had  not  been 
passed,  excepting  that  the  remedial  provisions  of  this  act  shall 
be  applicable  to  all  suits  and  proceedings  hereafter  com- 
menced :  And  provided  also,  That  all  applications  for  patents 
pending  at  the  time  of  the  passage  of  this  act,  in  cases  where 
the  duty  has  been  paid,  shall  be  proceeded  with  and  acted  on 
in  the  same  manner  as  though  filed  after  the  passage  thereof  : 
And  provided  further,  That  all  offences  which  are  defined 


THE  PATENT   ACT  OF   1870.  633 

and  punishable  under  any  of  said  acts,  and  all  penalties  and 
forfeitures  created  thereby  and  incurred  before  this  act  takes 
effect,  may  be  prosecuted,  sued  for,  and  recovered,  and  such 
offences  punished  according  to  the  provision  of  said  acts, 
which  are  continued  in  force  for  such  purpose. 

APPROVED  July  8,  1870. 

Repealed  June  22,  1874.     Revised  Statutes,  Title  LXXIV. 

PATENT   ACT   OF  MARCH  3,  1871. 

16  STATUTES  AT  LARGE,  583. 

An  Act  to  amend  an  Act  to  revise,  consolidate,  and  amend 
the  Statutes  relating  to  Patents  and  Copyrights. 

Be  it  enacted  by  the  Senate  and  House  of  Representatives 
of  the  United  States  of  America  in  Congress  assembled,  That 
that  part  of  section  thirty-three  of  an  act  entitled  "  An  act 
to  revise,  consolidate,  and  amend  the  statutes  relating  to  pat- 
ents and  copyrights,"  approved  July  eighth,  eighteen  hundred 
and  seventy,  which  requires  that,  in  case  of  application  by  as- 
signee  or  assignees  for  reissue  of  letters-patent,  the  application 
shall  be  made  and  the  specification  sworn  to  by  the  inventor 
or  discoverer,  if  living,  shall  not  be  construed  to  apply  to  pat- 
ents issued  and  assigned  prior  to  July  eighth,  eighteen  hun- 
dred and  seventy. 

APPROVED  March  3,  1871. 

Repealed  June  22,  1874.     Revised  Statutes,  Title  LXXIV. 

PATENT   ACT   OF  MARCH  24,  1871. 

17  STATUTES  AT  LARGE,  2. 

An  Act  to  further  regulate  the  publication  of  the  Specifications 

and  Drawings  of  the  Patent  Office. 

Be  it  enacted  by  the  Senate  and  House  of  Representative* 
of  the  United  States  of  America  in  Congress  assembled,  That 
if,  in  the  judgment  of  the  joint  committee  on  printing,  the 
provisions  of  the  joint  resolution  providing  for  publishing 
specifications  and  drawings  of  the  Patent  Office,  approved 
January  eleventh,  eighteen  hundred  and  seventy-one,  can  be 


634 


THE   PATENT   STATUTES. 


performed  under  the  direction  of  the  Commissioner  of  Patents 
more  advantageously  than  in  the  manner  provided  in  said 
joint  resolution,  it  shall  be  so  done,  under  such  limitations  and 
conditions  as  the  joint  committee  on  printing  may  from  time 
to  time  prescribe. 

SECTION  2.  That  the  price  of  the  printed  copies  of  specifica- 
tions and  drawings  of  patents,  when  uncertified,  shall  be  de- 
termined by  the  Commissioner  of  Patents,  ten  cents  being 
hereby  fixed  as  the  minimum,  and  fifty  cents  as  the  maximum 
price  of  the  same  ;  certified  copies  to  be  sold  at  the  price  fixed 
by  the  patent  act  of  eighteen  hundred  and  seventy. 

APPROVED  March  24,  1871. 

Repealed  June  22,  1874.     Eevised  Statutes,  Title  LXXIV. 


THE  REVISED   STATUTES 

RELATING   TO    PATENTS. 


440.  Clerks  and  employes. 

441.  Secretary  of  the  Interior. 

475.  Establishment    of    the    Patent 

Office. 

476.  Officers  and  employes. 

477.  Salaries. 

478.  Seal. 

479.  Bonds    of    Commissioner  and 

chief  clerk. 

480.  Restrictions  upon  officers  and 

employes. 

481.  Duties  of  Commissioner. 

482.  Duties  of  examiners-in-chief. 

483.  Establishment  of  regulations. 

484.  Arrangement  and  exhibition  of 

models,  &c. 

485.  Disposals  of  models  on  rejected 

applications. 

486.  Library. 

487.  Patent-agents  may  be  refused 

recognition. 

488.  Printing  of  papers  filed. 

489.  Printing  copies  of  claims,  laws, 

decisions,  <fec. 

490.  Printing      specifications      and 

drawings. 


491.  Additional   specifications    and 

drawings. 

492.  Lithographing  and  engraving. 
493    Price  of  copies  of  specifications 

and  drawings. 

494.  Annual  report  of  the  Commis- 
sioner. 

496.  Disbursements  for  Patent-Of- 
fice. 

629.  Jurisdiction  of  Circuit  Courts. 

699.  Writs  of  error  and  appeals, 
without  reference  to  amount. 

892.  Copies  of  records,&c.,  of  Patent- 

Office. 

893.  Copies     of      foreign     letters- 

patent. 

894.  Printed  copies  of  specifications 

and  drawings  of  patents. 
973.  Costs    where    disclaimers    are 
necessary. 

4883.  Patents,  how  issued,  attested, 
and  recorded. 

4884.  Their  contents  and  duration. 

4885.  Date  of  patent. 

4886.  What  inventions  are  patenta- 
ble. 


THE   EEVI8ED   STATUTES. 


635 


4887.  Patents  for  inventions  previ- 
ously patented  abroad. 

4888.  Requisites  of  specification  and 
claim. 

4889.  Drawings,  when  requisite. 

4890.  Specimens  of  ingredients,  &c. 

4891.  Model,  when  requisite. 

4892.  Oath  required  from  applicant. 

4893.  Examination  and  issuing  pat- 
ent. 

4894.  Limitation  upon  time  of  com- 
pleting application. 

4895.  Patents  granted  to  assignee. 

4896.  When,  and  on  what  oath,  exec- 
utor   or     administrator    may 
obtain  patent. 

4897.  Renewal     of     application    in 
cases  of  failure  to  pay  fees  in 
season. 

4898.  Assignment  of  patents. 

4899.  Persons  purchasing  of  invent- 
or before  application  may  use 
or  sell  the  thing  purchased. 

4900.  Patented     articles     must    be 
marked  as  such. 

4901.  Penalty  for  falsely  marking  or 
labelling  articles  as  patented. 

4902.  Filing  and  effect  of  caveats. 

4903.  Notice  of    rejection  of  claim 
for  patent  to  be  given  to  ap- 
plicant. 

4904.  Interferences. 

4905.  Affidavits  and  depositions. 

4906.  Subpoenas  to  witnesses. 

4907.  Witness  fees. 

4908.  Penalty  for  failing  to  attend  or 
refusing  to  testify. 

4909.  Appeals  from  primary  exam- 
iners to  examiners-in-chicf. 

4910.  From     examiners-in-chief    to 
Commissioner. 

4911.  From  the  Commissioner  to  the 
supreme  court  D.  C. 

4912.  Notice  of  such  appeal. 


4913.  Proceedings  on  appeal  to  su- 
preme court. 

4914.  Determination  of  such  appeal 
and  its  effect. 

4915.  Patents  obtainable  by  bill  in 
equity. 

4916.  He-issue  of  defective  patents. 

4917.  Disclaimer. 

4918.  Suits  touching  interfering  pat- 
ents. 

4919.  Suits  for  infringement ;  dam- 
ages. 

4920.  Pleading  and  proof  in  actions 
for  infringement. 

4921.  Power  of  courts  to  grant  in- 
junctions and  estimate  dam- 
ages. 

4922.  Suit  for  infringement  where 
specification  is  too  broad. 

4923.  Patent  not  void  on  account  of 
previous  use  in  foreign  coun- 
try. 

4924.  Extension  of  patents  granted 
prior  to  March  2,  1861. 

4925.  What  notice  of  application  for 
extension  must  be  given. 

4926.  Applications  for  extension  to 
whom  to  be  referred. 

4927.  Commissioner  to  hear  and  de- 
cide  the   question   of   exten- 
sion. 

4928.  Operation  of  extension. 

4929.  Patent  for  designs  authorized. 

4930.  Models  of  designs. 

4931.  Duration  of   patents  for  de- 
signs. 

4932.  Extension  of  patents  for  de- 
signs. 

4933.  Patents  for  designs  subject  to 
general  rules  of    patent-law. 

4934.  Fees    in    obtaining     patents, 

fte. 

4935.  Mode  of  payment. 

4936.  Refunding. 


636  THE    PATENT   STATUTES. 

SECTION  440.   There  shall  also  be  in  the  Department  of  the 

Interior  : 

****** 

In  the  Patent  Office  : 

One  chief  clerk,  at  a  salary  of  two  thousand  five  hundred 
dollars  a  year. 

One  examiner  in  charge  of  int2rferences,  at  a  salary  of  two 
thousand  five  hundred  dollars  a  year. 

One  examiner  in  charge  of  trade-marks,  at  a  salary  of  two 
thousand  five  hundred  dollars  a  year. 

Twenty-four  principal  examiners,  at  a  salary  of  two  thou- 
sand five  hundred  dollars  a  year  each. 

Twenty-four  first  assistant  examiners,  at  a  salary  of  one 
thousand  eight  hundred  dollars  a  year  each. 

Twenty-four  second  assistant  examiners  (two  of  whom  may 
be  women),  at  a  salary  of  one  thousand  six  hundred  dollars  a 
year  each. 

Twenty-four  third  assistant  examiners,  at  a  salary  of  one 
thousand  four  hundred  dollars  a  year  each. 

One  librarian,  at  a  salary  of  two  thousand  dollars  a  year. 

One  machinist,  at  a  salary  of  one  thousand  six  hundred 
dollars  a  year. 

Three  skilled  draughtsmen,  at  a  salary  of  one  thousand  two 
hundred  dollars  a  year  each. 

Thirty-five  copyists  of  drawings,  at  a  salary  of  one  thousand 
dollars  a  year  each. 

One  messenger  and  purchasing  clerk,  at  a  salary  of  one 
thousand  dollars  a  year. 

One  skilled  laborer,  at  a  salary  of  one  thousand  two  hundred 
dollars  a  year. 

Eight  attendants  in  the  model-room,  at  a  salary  of  one  thou- 
sand dollars  a  year  each. 

Eight  attendants  in  the  model-room,  at  a  salary  of  nine  hun- 
dred dollars  a  year  each.  [See  prior  patent  statutes  :  Sections 
2  and  3,  1870  ;  Sections  4  and  7,  1861  ;  Sections  1  and  3, 
1848  ;  Section  10,  1837  ;  Section  2,  1836.] 

SECTION  441.  The  Secretary  of  the  Interior  JB  charged  with 
supervising  all  public  business  relating  to  *  *  * 


THE   REVISED    STATUTES.  637 

Fifth.  Patents  for  inventions.  [See  prior  patent  statutes  : 
Section  1,  1870  ;  Section  2,  1849.] 

SECTION  475.  There  shall  be  in  the  Department  of  the  In- 
terior an  office  known  as  the  Patent-Office,  where  all  records, 
books,  models,  drawings,  specifications,  and  other  papers  and 
things  pertaining  to  patents  shall  be  safely  kept  and  preserved. 
[See  prior  patent  statutes  :  Section  1,  1870  ;  Section  1,  1836.] 

SECTION  476.  There  shall  be  in  the  Patent-Office  a  Commis- 
sioner of  Patents,  one  Assistant  Commissioner,  and  three  ex- 
ami  ners-in-chief,  who  shall  be  appointed  by  the  President,  by 
and  with  the  advice  and  consent  of  the  Senate.  All  other 
officers,  clerks,  and  employes  authorized  by  law  for  the  Office 
shall  be  appointed  by  the  Secretary  of  the  Interior,  upon  the 
nomination  of  the  Commissioner  of  Patents.  [See  prior  pat- 
ent statutes  :  Section  2,  1870  ;  Section  2,  1861  ;  Section  1, 
1836.] 

SECTION  477.  The  salaries  of  the  officers  mentioned  in  the 
preceding  section  shall  be  as  follows  : 

The  Commissioner  of  Patents,  four  thousand  five  hundred 
dollars  a  year. 

The  Assistant  Commissioner  of  Patents,  three  thousand  dol- 
lars a  year. 

Three  examiners-in-chief,  three  thousand  dollars  a  year 
each.  [See  prior  patent  statutes  :  Section  4,  1870  ;  Sections 
2  and  4,  1861  ;  Section  11,  1837  ;  Section  1,  1836.] 

SECTION  478.  The  seal  heretofore  provided  for  the  Patent- 
Office  shall  be  the  seal  of  the  Office,  with  which  letters-patent 
and  papers  issued  from  the  Office  shall  be  authenticated.  [See 
prior  patent  statutes  :  Section  12,  1870  ;  Section  4,  1836.] 

SECTION  479.  The  Commissioner  of  Patents  and  the  chief 
clerk,  before  entering  upon  their  duties,  shall  severally  give 
bond,  with  sureties,  to  the  Treasurer  of  the  United  States,  the 
former  in  the  sum  of  ten  thousand  dollars,  and  the  latter  in 
the  sum  of  five  thousand  dollars,  conditioned  for  the  faithful 
discharge  of  their  respective  duties,  and  that  they  shall  render 
to  the  proper  officers  of  the  Treasury  a  true  account  of  all 
money  received  by  virtue  of  their  offices.  [See  prior  patent 
statutes  :  Section  6,  1870  ;  Section  3,  1836.] 


638  THE    PATENT    STATUTES. 

SECTION  480.  All  officers  and  employes  of  the  Patent- Office 
shall  be  incapable,  during  the  period  for  which  they  hold  their 
appointments,  to  acquire  or  take,  directly  or  indirectly,  except 
by  inheritance  or  bequest,  any  right  or  interest  in  any  patent 
issued  by  the  Office.  [See  prior  patent  statutes  :  Section  16, 
1870.] 

SECTION  481.  The  Commissioner  of  Patents,  under  the 
direction  of  the  Secretary  of  the  Interior,  shall  superintend  or 
perform  all  duties  respecting  the  granting  and  issuing  of  pat- 
ents directed  by  law  ;  and  he  shall  have  charge  of  all  books, 
records,  papers,  models,  machines,  and  other  things  belonging 
to  the  Patent- Office.  [See  prior  patent  statutes  :  Section  7, 
1870  ;  Section  1,  1836.] 

SECTION  482.  The  examiners-in-chief  shall  be  persons  of 
competent  legal  knowledge  and  scientific  ability,  whose  duty 
it  shall  be,  on  the  written  petition  of  the  appellant,  to  revise 
and  determine  upon  the  validity  of  the  adverse  decisions  of 
examiners  upon  applications  for  patents,  and  for  re-issues  of 
patents,  and  in  interference  cases  ;  and,  when  required  by  the 
Commissioner,  they  shall  hear  and  report  upon  claims  for  ex- 
tensions, and  perform  such  other  like  duties  as  he  may  assign 
them.  [See  prior  patent  statutes  :  Section  10,  1870  ;  Section 
2,  1861.] 

SECTION  483.  The  Commissioner  of  Patents,  subject  to  the 
approval  of  the  Secretary  of  the  Interior,  may  from  time  to 
time  establish  regulations,  not  inconsistent  with  law,  for  the 
conduct  of  proceedings  in  the  Patent-Office. .  [See  prior  pat- 
ent statutes  :  Section  19,  1870  ] 

SECTION  484.  The  Commissioner  of  Patents  shall  cause  to 
be  classified  and  arranged  in  suitable  cases,  in  the  rooms  and 
galleries  provided  for  that  purpose,  the  models,  specimens  of 
composition,  fabrics,  manufactures,  works  of  art,  and  designs, 
which  have  been  or  shall  be  deposited  in  the  Patent- Office  ; 
and  the  rooms  and  galleries  shall  be  kept  open  during  suitable 
hours  for  public  inspection.  [See  prior  patent  statutes  :  Sec- 
tion 13,  1870  ;  Section  20,  1836.] 

SECTION  485.  The  Commissioner  of  Patents  may  restore  to 
the  respective  applicants  such  of  the  models  belonging  to 


THE   REVISED    STATUTES.  639 

rejected  applications  as  he  shall  not  think  necessary  to  be  pre- 
served, or  he  may  sell  or  otherwise  dispose  of  them  after  the 
application  has  been  finally  rejected  for  one  year,  paying  the 
proceeds  into  the  Treasury,  as  other  patent-moneys  are 
directed  to  be  paid.  [See  prior  patent  statutes  :  Section  14, 
1870  ;  Section  5,  1861.] 

SECTION  486.  There  shall  be  purchased  for  the  use  of  the 
Patent-Office  a  library  of  such  scientific  works  and  periodicals, 
both  foreign  and  American,  as  may  aid  the  officers  in  the  dis- 
charge of  their  duties,  not  exceeding  the  amount  annually  ap. 
propriated  for  that  purpose.  [See  prior  patent  statute  :  Sec- 
tion 15,  1870.] 

SECTION  487.  For  gross  misconduct  the  Commissioner  of 
Patents  may  refuse  to  recognize  any  person  as  a  patent-agent, 
either  generally  or  in  any  particular  case  ;  but  the  reasons  for 
such  refusal  shall  be  duly  recorded,  and  be  subject  to  the  ap- 
proval of  the  Secretary  of  the  Interior.  [See  prior  patent 
statute  :  Section  17,  1870.] 

SECTION  488.  The  Commissioner  of  Patents  may  require  all 
papers  filed  in  the  Patent-Office,  if  not  correctly,  legibly,  and 
clearly  written,  to  be  printed  at  the  cost  of  the  party  filing 
them.  [See  prior  patent  statutes  :  Section  18,  1870  ;  Section 
8,  1861.] 

SECTION  489.  The  Commissioner  of  Patents  may  print,  or 
cause  to  be  printed,  copies  of  the  claims  of  current  issues,  and 
copies  of  such  laws,  decisions,  regulations,  and  circulars  as 
may  be  necessary  for  the  information  of  the  public.  [See 
prior  patent  statute  :  Section  20,  1870.] 

SECTION  490.  The  Commissioner  of  Patents  is  authorized  to 
have  printed,  from  time  to  time,  for  gratuitous  distribution, 
not  to  exceed  one  hundred  and  fifty  copies  of  the  complete 
specifications  and  drawings  of  each  patent  hereafter  issued, 
together  with  suitable  indexes,  one  copy  to  be  placed  for  free 
public  inspection  in  each  capitol  of  every  State  and  territory, 
one  for  the  like  purpose  in  the  clerk's  office  of  the  district 
court  of  each  judicial  district  of  the  United  States,  except 
when  such  offices  are  located  in  State  or  territorial  capitols, 
and  one  in  the  Library  of  Congress,  which  copies  shall  be  cer- 


640  THE    PATENT    STATUTES. 

tified  under  the  hand  of  the  Commissioner  and  seal  of  the 
Patent-Office,  and  shall  not  be  taken  from  the  depositories  for 
any  other  purpose  than  to  be  used  as  evidence.  [See  Joint 
Resolution  No.  5,  January  11,  1871,  16  Statutes  at  Large, 
590.] 

SECTION  491.  The  Commissioner  of  Patents  is  authorized  to 
have  printed  such  additional  numbers  of  copies  of  specifica- 
tions and  drawings,  certified  as  provided  in  the  preceding  sec- 
tion, at  a  price  not  to  exceed  the  contract  price  for  such  draw- 
ings, for  sale,  as  may  be  warranted  by  the  actual  demand  for 
the  same  ;  and  he  is  also  authorized  to  furnish  a  complete  set 
of  such  specifications  and  drawings  to  any  public  library  which 
will  pay  for  binding  the  same  into  volumes  to  correspond  with 
those  in  the  Patent-Office,  and  for  the  transportation  of  the 
same,  and  which  shall  also  provide  for  proper  custody  for  the 
same,  with  convenient  access  for  the  public  thereto,  under 
such  regulations  as  the  Commissioner  shall  deem  reasonable. 
[See  Joint  Resolution  No.  5,  January  11,  1871,  16  Statutes  at 
Large,  590.] 

SECTION  492.  The  lithographing  and  engraving  required  by 
the  two  preceding  sections  shall  be  awarded  to  the  lowest  and 
best  bidders  for  the  interests  of  the  Government,  due  regard 
being  paid  to  the  execution  of  the  work,  after  due  advertising 
by  the  Congressional  Printer,  under  the  direction  of  the  Joint 
Committee  on  Printing  ;  but  the  Joint  Committee  on  Printing 
may  empower  the  Congressional  Printer  to  make  immediate 
contracts  for  engraving,  whenever,  in  their  opinion,  the 
exigencies  of  the  public  service  will  not  justify  waiting  for  ad- 
vertisement and  award  ;  or  if,  in  the  judgment  of  the  Joint 
Committee  on  Printing,  the  work  can  be  performed  under  the 
direction  of  the  Commissioner  of  Patents  more  advantageously 
than  in  the  manner  above  prescribed,  it  shall  be  so  done,  under 
such  limitations  and  conditions  as  the  Joint  Committee  on 
Printing  jnay  from  time  to  time  prescribe.  [See  Joint  Reso- 
lution No.  5,  January  11,  1871,  16  Statutes  at  Large,  590, 
and  Section  1  of  Patent  Act  of  March  24,  1871.] 

SECTION  493.  The  price  to  be  paid  for  uncertified  printed 
copies  of  specifications  and  drawings  of  patents  shall  be  deter- 


THE   REVISED    STATUTES.  641 

mined  by  the  Commissioner  of  Patents,  within  the  limits  of 
ten  cents  as  the  minimum  and  fifty  cents  as  the  maximum 
price.  [See  prior  patent  statute  :  Section  1,  March  24,  1871.] 

SECTION  494.  The  Commissioner  of  Patents  shall  lay  befoie 
Congress,  in  the  month  of  January,  annually,  a  report,  giving 
a  detailed  statement  of  all  moneys  received  for  patents,  for 
copies  of  records  or  drawings,  or  from  any  other  source  what- 
ever ;  a  detailed  statement  of  all  expenditures  for  contingent 
and  miscellaneous  expenses  ;  a  list  of  all  patents  which  were 
granted  during  the  preceding  year,  designating  under  proper 
heads  the  subjects  of  such  patents  ;  an  alphabetical  list  of  all  the 
patentees,  with  their  places  of  residence  ;  a  list  of  all  patents 
which  have  been  extended  during  the  year  ;  and  such  other 
information  of  the  condition  of  the  Patent-Office  as  may  be 
useful  to  Congress  or  the  public.  [See  prior  patent  statutes  : 
Section  9,  1870  ;  Section  14,  1837  ;  Section  1,  July  3,  1832.] 

SECTION  496.  All  disbursements  for  the  Patent-Office  shall 
be  made  by  the  disbursing  clerk  of  the  Interior  Department. 
[See  prior  patent  statutes  :  Section  69,  1870  ;  Section  14, 
1837.] 

SECTION  629.  The  circuit  courts  shall  have  original  jurisdic- 
tion, as  follows  :  *  *  * 

Ninth.  Of  all  suits  at  law  or  in  equity  arising  under  the 
patent  or  copyright  laws  of  the  United  States.  [See  prior 
patent  statutes  :  Section  55,  1870  ;  Section  14,  1836  ;  Section 
1,  1819.] 

SECTION  699.  A  writ  of  error  may  be  allowed  to  review  ajiy 
final  judgment  at  law,  and  an  appeal  shall  be  allowed  from 
any  final  decree  in  equity  hereinafter  mentioned,  without  re- 
gard to  the  sum  or  value  in  dispute  : 

First.  Any  final  judgment  at  law  or  final  decree  in  equity 
of  any  circuit  court,  or  of  any  district  court  acting  as  a  circuit 
court,  or  of  the  Supreme  Court  of  the  District  of  Columbia, 
or  of  any  Territory,  in  any  case  touching  patent-rights  or 
copyrights.  [See  prior  patent  statutes  :  Section  56,  1870 ; 
Section  1,  February  18,  1861  ;  Section  16,  1836  ;  Section  1, 
1819.] 

SECTION   892.  Written  or   printed   copies  of  any  records, 


642  THE   PATENT   STATUTES. 

books,  papers,  or  drawings  belonging  to  the  Patent-Office, 
and  of  letters-patent  authenticated  by  the  seal  and  certified  by 
the  Commissioner  or  Acting  Commissioner  thereof,  shall  be 
evidence  in  all  cases  wherein  the  originals  could  be  evidence  ; 
and  any  person  making  application  therefor,  and  paying  the 
fee  required  by  law,  shall  have  certified  copies  thereof.  [See 
prior  patent  statutes  :  Section  57,  1870  ;  Section  15,  March  2, 
1861  ;  Section  2,  1837  ;  Section  4,  1836  ;  Sections  3,  6,  1790.] 

SECTION  893.  Copies  of  the  specifications  and  drawings  of 
•foreign  letters-patent,  certified  as  provided  in  the  preceding 
section,  shall  be  prima-facie  evidence  of  the  fact  of  the 
granting  of  such  letters-patent,  and  of  the  date  and  contents 
thereof.  [See  prior  patent  statute  :  Section  57,  1870.] 

SECTION  894.  The  printed  copies  of  specifications  and 
drawings  of  patents,  which  the  Commissioner  of  Patents  is 
authorized  to  print  for  gratuitous  distribution,  and  to  deposit 
in  the  capitols  of  the  States  and  Territories,  and  in  the  clerk's 
offices  of  the  district  courts,  shall,  when  certified  by  him  and 
authenticated  by  the  seal  of  his  office,  be  received  in  all  courts 
as  evidence  of  all  matters  therein  contained.  [See  Joint  Reso- 
lution !No.  5,  January  11,  1871  ;  16  Statutes  at  Large,  590.] 

SECTION  973.  "When  judgment  or  decree  is  rendered  for  the 
plaintiff  or  complainant,  in  any  suit  at  law  or  in  equity,  for 
the  infringement  of  a  part  of  a  patent,  in  which  it  appears  that 
the  patentee,  in  his  specification,  claimed  to  be  the  original 
and  first  inventor  or  discoverer  of  any  material  or  substantial 
part  of  the  thing  patented,  of  which  he  was  not  the  original 
and  first  inventor,  no  costs  shall  be  recovered,  unless  the 
proper  disclaimer,  as  provided  by  the  patent-laws,  has  been 
entered  at  the  Patent-Office  before  the  suit  was  brought. 
[See  Revised  Statutes,  Section  4922  ;  and  prior  patent  stat- 
utes :  Section  60,  1870  ;  Section  9,  1837  ;  Section  15,  1836.] 

SECTION  4883.  All  patents  shall  be  issued  in  the  name  of 
the  United  States  of  America,  under  the  seal  of  the  Patent 
Office,  and  shall  be  signed  by  the  Secretary  of  the  Interior  and 
countersigned  by  the  Commissioner  of  Patents,  and  they  shall 
be  recorded,  together  with  the  specifications,  in  the  Patent 
Office,  in  books  to  be  kept  for  that  purpose.  [See  prior  pat- 


THE   REVISED   STATUTES.  643 

ent  statutes  :  Section  21,  1870  ;  Section  5,  1836  ;  Section  1, 
1793  ;  Section  1,  1790.] 

SECTION  4884.  Every  patent  shall  contain  a  short  title  or 
description  of  the  invention  or  discovery,  correctly  indicating 
its  nature  and  design,  and  a  grant  to  the  patentee,  his  heirs  or 
assigns,  for  the  term  of  seventeen  years,  of  the  exclusive  right 
to  make,  use,  and  vend  the  invention  or  discovery  throughout 
the  United  -States,  and  the  Territories  thereof,  referring  to  the 
specification  for  the  particulars  thereof.  A  copy  of  the 
specification  and  drawings  shall  be  annexed  to  the  patent  and 
be  a  part  thereof.  [See  prior  patent  statutes  :  Section  22, 
1870  ;  Section  16,  1861  ;  Section  5,  1836  :  Section  1,  1793  ; 
Section  1,  1790.] 

SECTION  4885.  Every  patent  shall  bear  date  as  of  a  day  not 
later  than  six  months  from  the  time  at  which  it  was  passed  and 
allowed  and  notice  thereof  was  sent  to  the  applicant  or  his 
agent ;  and  if  the  final  fee  is  not  paid  within  that  period  the 
patent  shall  be  withheld.  [See  prior  patent  statutes  :  Section 
23,  1870  ;  Section  3,  1863  ;  Section  8,  1836.] 

SECTION  4886.  Any  person  who  has  invented  or  discovered 
any  new  and  usef til  art,  machine,  manufacture  or  composition 
of  matter,  or  any  new  and  useful  improvement  thereof,  not 
known  or  used  by  others  in  this  country,  and  not  patented  or 
described  in  any  printed  publication  in  this  or  any  foreign 
country,  before  his  invention  or  discovery  thereof,  and  not  in 
public  use  or  on  sale  for  more  than  two  years  prior  to  his  ap- 
plication, unless  the  same  is  proved  to  have  been  abandoned, 
may,  upon  payment  of  the  fees  required  by  law,  and  other 
due  proceedings  had,  obtain  a  patent  therefor.  [See  prior 
patent  statutes  :  Section  24,  1870  ;  Sections  6  and  7,  1836  ; 
Section  1,  1800  ;  Section  1,  1793.] 

SECTION  4887.  No  person  shall  be  debarred  from  receiving 
a  patent  for  his  invention  or  discovery,  nor  shall  any  patent 
be  declared  invalid,  by  reason  of  its  having  been  first  patented 
or  caused  to  be  patented  in  a  foreign  country,  unless  the  same 
has  been  introduced  into  public  use  in  the  United  States  for  more 
than  two  years  prior  to  the  application.  But  every  patent  grant- 
ed for  an  invention  which  has  been  previously  patented  in  a 


644  THE    PATENT    STATUTES. 

foreign  country  shall  be  so  limited  as  to  expire  at  the  same  time 
with  the  foreign  patent,  or,  if  there  be  more  than  one,  at  the 
same  time  with  the  one  having  the  shortest  term,  and  in  no  case 
shall  it  be  in  force  more  than  seventeen  years.  [See  prior 
patent  statutes  :  Section  25,  1870  ;  Section  6,  1839  ;  Section 
8,  1836.] 

SECTION  4888.  Before  any  inventor  or  discoverer  shall  re- 
ceive a  patent  for  his  invention  or  discovery,  he  shall  make 
application  therefor,  in  writing,  to  the  Commissioner  of  Pat- 
ents, and  shall  file  in  the  Patent-Office  a  written  description 
of  the  same,  and  of  the  manner  and  process  of  making,  con- 
structing, compounding,  and  using  it,  in  such  full,  clear,  con- 
cise, and  exact  terms  as  to  enable  any  person  skilled  in  the  art 
or  science  to  which  it  appertains,  or  with  which  it  is  most 
nearly  connected,  to  make,  construct,  compound  and  use  the 
game  ;  and  in  case  of  a  machine,  he  shall  explain  the  principle 
thereof,  and  the  best  mode  in  which  he  has  contemplated  ap- 
plying that  principle,  so  as  to  distinguish  it  from  other  inven- 
tions ;  and  he  shall  particularly  point  out  and  distinctly  claim, 
the  part,  improvement,  or  combination  which  he  claims  as  his 
invention  or  discovery.  The  specification  and  claim  shall  be 
signed  by  the  inventor  and  attested  by  two  witnesses.  [See 
prior  patent  statutes  :  Section  26,  1870  ;  Section  6,  1836  ; 
Section  1,  1793  ;  Section  2,  1790.] 

SECTION  4889.  When  the  nature  of  the  case  admits  of  draw- 
ings, the  applicant  shall  furnish  one  copy,  signed  by  the  in- 
ventor or  his  attorney  in  fact,  and  attested  by  two  witnesses, 
which  shall  be  filed  in  the  Patent- Office,  and  a  copy  of  the 
drawing,  to  be  furnished  by  the  Patent-Office,  shall  be  at- 
tached to  the  patent  as  a  part  of  the  specification.  [See  prior 
patent  statutes  :  Section  27,  1870  ;  Section  6,  1837 ;  Section 
6,  1836  ;  Section  3,  1793.] 

SECTION  4890.  When  the  invention  or  discovery  is  of  a  com- 
position of  matter,  the  applicant,  if  required  by  the  Commis- 
sioner, shall  furnish  specimens  of  ingredients  and  of  the  com- 
position, sufficient  in  quantity  for  the  purpose  of  experiment. 
[See  prior  patent  statutes  :  Section  28, 1870  ;  Section  6,  1836  ; 
Section  3,  1793.] 


THE   REVISED   STATUTES.  646 

SECTION  4891.  In  all  cases  which  admit  of  representation  by 
model,  the  applicant,  if  required  by  the  Commissioner,  shall 
furnish  a  model  of  convenient  size  to  exhibit  advantageously 
the  several  parts  of  his  invention  or  discovery.  [See  prior 
patent  statutes  :  Section  29,  1870  ;  Section  6,  1836  ;  "Section  3, 
1793  ;  Section  2,  1790.] 

SECTION  4892.  The  applicant  shall  make  oath  that  he  does 
verily  believe  himself  to  be  the  original  and  first  inventor  or 
discoverer  of  the  art,  machine,  manufacture,  composition,  or 
improvement  for  which  he  solicits  a  patent  ;  that  he  does  not 
know  and  does  not  believe  that  the  same  was  ever  before 
known  or  used  ;  and  shall  state  of  what  country  he  is  a  citi- 
zen. Such  oath  may  be  made  before  any  person  within  the 
United  States  authorized  by  law  to  administer  oaths,  or  when 
the  applicant  resides  in  a  foreign  country,  before  any  minister, 
charge  d"1  affaires,  consul,  or  commercial  agent,  holding  com- 
mission under  the  Government  of  the  United  States,  or  before 
any  notary  public  of  the  foreign  country  in  which  the  appli- 
cant may  be.  [See  prior  patent  statutes  :  Section  30,  1870  ; 
Section  4,  1842  ;  Section  6,  1836  ;  Section  3,  1793.] 

SECTION  4893.  On  the  filing  of  any  such  application  and  the 
payment  of  the  fees  required  by  law,  the  Commissioner  of 
Patents  shall  cause  an  examination  to  be  made  of  the  alleged 
new  invention  or  discovery  ;  and  if  on  such  examination  it 
shall  appear  that  the  claimant  is  justly  entitled  to  a  patent 
under  the  law,  and  that  the  same  is  sufficiently  useful  and  im- 
portant, the  Commissioner  shall  issue  a  patent  therefor.  [See 
prior  patent  statutes  :  Section  31,  1870  ;  Section  7,  1836  ; 
Section  1,  1790.] 

SECTION  4894.  All  applications  for  patents  shall  be  com- 
pleted and  prepared  for  examination  within  two  years  after 
the  filing  of  the  application,  and  in  default  thereof,  or  upon 
failure  of  the  applicant  to  prosecute  the  same  within  two  years 
after  any  action  therein,  of  which  notice  shall  have  been  given 
to  the  applicant,  they  shall  be  regarded  as  abandoned  by  the 
parties  thereto,  unless  it  be  shown  to  the  satisfaction  of  the 
Commissioner  of  Patents  that  such  delay  was  unavoidable. 
[See  prior  patent  statutes:  Section  32,  1870  ;  Section  12,  1861.1 


64:6  THE    PATENT    STATUTES. 

SECTION  4895.  Patents  may  be  granted  and  issued  or  re- 
issued to  the  assignee  of  the  inventor  or  discoverer  ;  but  the 
assignment  must  first  be  entered  of  record  in  the  Patent- 
Office.  And  in  all  cases  of  an  application  bj  an  assignee  for 
the  issue  of  a  patent,  the  application  shall  be  made  and  the 
specification  sworn  to  by  the  inventor  or  discoverer  ;  and  in 
all  cases .  of  an  application  for  a  re-issue  of  any  patent,  the 
application  must  be  made  and  the  corrected  specification  signed 
by  the  inventor  or  discoverer,  if  he  is  living,  unless  the  patent 
was  issued  and  the  assignment  made  before  the  eighth  day  of 
July,  eighteen  hundred  and  seventy.  [See  prior  patent  stat- 
utes :  Section  33,  1870  ;  Section  6,  1837.] 

SECTION  4896.  When  any  person,  having  made  any  new  in- 
vention or  discovery  for  which  a  patent  might  have  been 
granted,  dies  before  a  patent  is  granted,  the  right  of  applying 
for  and  obtaining  the  patent  shall  devolve  on  his  executor  or 
administrator,  in  trust  for  the  heirs  at  law  of  the  deceased,  in 
case  he  shall  have  died  intestate  ;  or  if  he  shall  have  left  a 
will,  disposing  of  the  same,  then  in  trust  for  his  devisees,  in 
as  full  manner  and  on  the  same  terms  and  conditions  as  the 
same  might  have  been  claimed  or  enjoyed  by  him  in  his  life 
time  ;  and  when  the  application  is  made  by  such  legal  repre- 
sentatives, the  oath  or  affirmation  required  to  be  made  shall  be 
so  varied  in  form  that  it  can  be  made  by  them.  [See  prior 
patent  statutes  :  Section  34,  1870  ;  Section  10,  1836  ;  Sec- 
tion 2,  1800.] 

SECTION  4897.  Any  person  who  has  an  interest  in  an  inven- 
tion or  discovery,  whether  as  inventor,  discoverer,  or  assignee, 
for  which  a  patent  was  ordered  to  issue  upon  the  payment  of 
the  final  fee,  but  who  fails  to  make  payment  thereof  within 
six  months  from  the  time  at  which  it  was  passed  and  allowed, 
and  notice  thereof  was  sent  to  the  applicant  or  his  agent,  shall 
have  a  right  to  make  an  application  for  a  patent  for  such  in- 
vention or  discovery  the  same  as  in  the  case  of  an  original  ap- 
plication. But  such  second  application  must  be  made  within 
two  years  after  the  allowance  of  the  original  application.  But 
no  person  shall  be  held  responsible  in  damages  for  the  manu- 
facture or  use  of  any  article  or  thing  for  which  a  patent  was 


THE   EEVI8ED   STATUTES.  647 

ordered  to  issue  under  such  renewed  application  prior  to  the 
issue  of  the  patent.  And  upon  the  hearing  of  renewed  appli- 
cations preferred  under  this  section,  abandonment  shall  be 
considered  as  a  question  of  fact.  [See  prior  patent  statutes  : 
Section  35,  1870  ;  Section  1,  1865  ;  Section  1,  1864.] 

SECTION  4898.  Every  patent  or  any  interest  therein  shall  be 
assignable  in  law,  by  an  instrument  in  writing  ;  and  the  pat- 
entee or  his  assigns  or  legal  representatives  may,  in  like  man- 
ner, grant  and  convey  an  exclusive  right  under  his  patent  to 
the  whole  or  any  specified  part  of  the  United  States.  An 
assignment,  grant,  or  conveyance  shall  be  void  as  against  any 
subsequent  purchaser  or  mortgagee  for  a  valuable  considera- 
tion, without  notice,  unless  it  is  recorded  in  the  Patent-Office 
within  three  months  from  the  date  thereof.  [See  prior  patent 
statutes  :  Section  36,  1870  ;  Section  11,  1836  ;  Section  4, 
1793.] 

SECTION  4899.  Every  person  who  purchases  of  the  inventor 
or  discoverer,  or  with  his  knowledge  and  consent  constructs 
any  newly  invented  or  discovered  machine,  or  other  patentable 
article,  prior  to  the  application  by  the  inventor  or  discoverer 
for  a  patent,  or  who  sells  or  uses  one  so  constructed,  shall 
have  the  right  to  use,  and  vend  to  others  to  be  used,  the 
specific  thing  so  made  or  purchased,  without  liability  there- 
for. [See  prior  patent  statutes  :  Section  37,  1870  ;  Section 
7,  1839.] 

SECTION  4900.  It  shall  be  the  duty  of  all  patentees,  and 
their  assigns  and  legal  representatives,  and  of  all  persons  mak- 
ing or  vending  any  patented  article  for  or  under  them,  to  give 
sufficient  notice  to  the  public  that  the  same  is  patented  ;  either 
by  fixing  thereon  the  word  "  patented,"  together  with  the  day 
and  year  the  patent  was  granted  ;  or  when,  from  the  character 
of  the  article,  this  cannot  be  done,  by  fixing  to  it,  or  to  the 
package  wherein  one  or  more  of  them  is  inclosed,  a  label  con- 
.taining  the  like  notice  ;  and  in  any  suit  for  infringement,  by 
the  party  failing  so  to  mark,  no  damages  shall  be  recovered  by 
the  plaintiff,  except  on  proof  that  the  defendant  was  duly 
notified  of  the  infringement,  and  continued,  after  such  notice, 
to  make,  use,  or  vend  the  article  so  patented.  [See  prior 


648  THE    PATENT    STATUTES. 

patent  statutes  :  Section  38,  1870  ;  Section  13,  1861  ;  Section 
6,  1842.] 

SECTION  4901.  Every  person  who,  in  any  manner,  marks 
upon  anything  made,  used,  or  sold  by  him  for  which  he  has 
not  obtained  a  patent,  the  name  or  any  imitation  of  the  name 
of  any  person  who  has  obtained  a  patent  therefor  without  the 
consent  of  such  patentee,  or  his  assigns  or  legal  representa- 
tives ;  or 

Who,  in  any  manner,  marks  upon  or  affixes  to  any  such 
patented  article  the  word  "  patent"  or  "  patentee,"  or  the 
words  "  letters-patent,"  or  any  word  of  like  import,  with  in- 
tent  to  imitate  or  counterfeit  the  mark  or  device  of  the  pat- 
entee, without  having  the  license  or  consent  of  such  patentee 
or  his  assigns  or  legal  representatives  ;  or 

Who,  in  any  manner,  marks  upon  or  affixes  to  any  un  pat- 
ented article  the  word  "  patent,"  or  any  word  importing  that 
the  same  is  patented,  for  the  purpose  of  deceiving  the  public, 
shall  be  liable,  for  every  such  offence,  to  a  penalty  of  not  Jess 
than  one  hundred  dollars,  with  costs  ;  one  half  of  said  penalty 
to  the  person  who  shall  sue  for  the  same,  and  the  other  to  the 
use  of  the  United  States,  to  be  recovered  by  suit  in  any  dis- 
trict court  of  the  United  States,  within  whose  jurisdiction  such 
offence  may  have  been  committed.  [See  prior  patent  stat- 
utes :  Section  39,  1870  ;  Section  5,  1842.] 

SECTION  4902.  Any  citizen  of  the  United  States  who  makes 
any  new  invention  or  discovery,  and  desires  further  time  to 
mature  the  same,  may,  on  payment  of  the  fees  required  by 
law,  file  in  the  Patent-Office  a  caveat  setting  forth  the  design 
thereof,  and  of  its  distinguishing  characteristics,  and  praying 
protection  of  his  right  until  he  shall  have  matured  his  inven- 
tion. Such  caveat  shall  be  filed  in  the  confidential  archives  of 
the  office  and  preserved  in  secrecy,  and  shall  be  operative  for 
the  term  of  one  year  from  the  filing  thereof  ;  and  if  applica- 
tion is  made  within  the  year  by  any  other  person  for  a  patent 
with  which  such  caveat  would  in  any  manner  interfere,  the 
Commissioner  shall  deposit  the  description,  specification, 
drawings,  and  model  of  such  application  in  like  manner  in  the 
confidential  archives  of  the  office,  and  give  notice  thereof,  by 


THE   REVISED   STATUTES.  649 

mail,  to  the  person  by  whom  the  caveat  was  filed.  If  such 
person  desires  to  avail  himself  of  his  caveat,  he  shall  file  his 
description,  specifications,  drawings,  and  model  within  three 
months  from  the  time  of  placing  the  notice  in  the  post-office 
in  Washington,  with  the  usual  time  required  for  transmitting 
it  to  the  caveator  added  thereto  ;  which  time  shall  be  indorsed 
on  the  notice.  An  alien  shall  have  the  privilege  herein 
granted,  if  he  has  resided  in  the  United  States  one  year  next 
preceding  the  filing  of  his  caveat,  and  has  made  oath  of  his 
intention  to  become  a  citizen.  [See  prior  patent  statutes  : 
Section  40,  1870  ;  Section  9,  1861  ;  Section  12,  1836.] 

SECTION  4903.  Whenever,  on  examination,  any  claim  for  a 
patent  is  rejected,  the  Commissioner  shall  notify  the  applicant 
thereof,  giving  him  briefly  the  reasons  for  such  rejection,  to- 
gether with  such  information  and  references  as  may  be  useful 
in  judging  of  the  propriety  of  renewing  his  application  or  of 
altering  his  specification  ;  and  if,  after  receiving  such  notice, 
the  applicant  persists  in  his  claim  for  a  patent,  with  or  without 
altering  his  specifications,  the  Commissioner  shall  order  a  re- 
examination  of  the  case.  [See  prior  patent  statutes  :  Section 
41,  18TO  ;  Section  7,  1836.] 

SECTION  4904.  Whenever  an  application  is  made  for  a  patent 
which,  in  the  opinion  of  the  Commissioner,  would  interfere 
with  any  pending  application,  or  with  any  unexpired  patent, 
he  shall  give  notice  thereof  to  the  applicants,  or  applicant  and 
patentee,  as  the  case  may  be,  and  shall  direct  the  primary  ex- 
aminer to  proceed  to  determine  the  question  of  priority  of 
invention.  And  the  Commissioner  may  issue  a  patent  to  the 
party  who  is  adjudged  the  prior  inventor,  unless  the  adverse 
party  appeals  from  the  decision  of  the  primary  examiner,  or  of 
the  board  of  examiners-in-chief,  as  the  case  may  be,  within 
such  time,  not  less  than  twenty  days,  as  the  Commissioner 
shall  prescribe.  [See  prior  patent  statutes  :  Section  42,  1870  ; 
Section  8,  1836  ;  Section  9,  1793.] 

SECTION  4905.  The  Commissioner  of  Patents  may  establish 
rules  for  taking  affidavits  and  depositions  required  in  cases 
pending  in  the  Patent-Office,  and  such  affidavits  and  deposi- 
tions may  be  taken  before  any  officer  authorized  by  law  to  take 


650  THE   PATENT   STATUTES. 

depositions  to  be  used  in  the  courts  of  the  United  States,  or  of 
the  State  where  the  officer  resides.  [See  prior  patent  statutes  : 
Section  43,  1870  ;  Section  1,  March  3,  1861  ;  Section  12, 
1839.] 

SECTION  4906.  The  clerk  of  any  court  of  the  United  States, 
for  any  district  or  Territory  wherein  testimony  is  to  be  taken 
for  use  in  any  contested  case  pending  in  the  Patent-Office, 
shall,  upon  the  application  of  any  party  thereto,  or  of  his 
agent  or  attorney,  issue  a  subpoena  for  any  witness  residing  or 
being  within  such  district  or  Territory,  commanding  him  to 
appear  and  testify  before  any  officer  in  such  district  or  Terri- 
tory authorized  to  take  depositions  and  affidavits,  at  any  time 
and  place  in  the  subpoena  stated.  But  no  witness  shall  be 
required  to  attend  at  any  place  more  than  forty  miles  from 
the  place  where  the  subpoena  is  served  upon  him.  [See  prior 
patent  statutes  :  Section  44,  1870  ;  Section  1,  1861.] 

SECTION  4907.  Every  witness  duly  subpoenaed  and  in  attend- 
ance shall  be  allowed  the  same  fees  as  are  allowed  to  witnesses 
attending  the  courts  of  the  United  States.  [See  prior  patent 
statutes  :  Section  45,  1870  ;  Section  1,  1861.] 

SECTION  4908.  Whenever  any  witness,  after  being  duly 
served  with  such  subpoena,  neglects  or  refuses  to  appear,  or 
after  appearing  refuses  to  testify,  the  judge  of  the  court  whose 
clerk  issued  the  subpoena  may,  on  proof  of  such  neglect  or 
refusal,  enforce  obedience  to  the  process,  or  punish  the  dis- 
obedience, as  in  other  like  cases.  But  no  witness  shall  be 
deemed  guilty  of  contempt  for  disobeying  such  subpoena,  un- 
less his  fees  and  travelling  expenses  in  going  to,  returning 
from,  and  one  day's  attendance  at  the  place  of  examination, 
are  paid  or  tendered  him  at  the  time  of  the  service  of  the 
subpoena  ;  nor  for  refusing  to  disclose  any  secret  invention  or 
discovery  made  or  owned  by  himself.  [See  prior  patent  stat- 
utes :  Sections  44  and  45,  1870  ;  Section  1,  1861.] 

SECTION  4909.  Every  applicant  for  a  patent  or  for  the  re- 
issue of  a  patent,  any  of  the  claims  of  which  have  been  twice 
rejected,  and  every  party  to  an'  interference,  may  appeal  from 
the  decision  of  the  primary  examiner,  or  of  the  examiner  in 
charge  of  interferences  in  such  case,  to  the  board  of  examiners- 


THE   REVISED   STATUTES.  651 

in-chief ;   having  once  paid  the  fee  for  such  appeal.     [See 
prior  patent  statutes  :  Section  46,  1870  ;  Section  1,  1866.] 

SECTION  4910.  If  such  party  is  dissatisfied  with  the  decision 
of  the  exaininers-in  chief,  he  may,  on  payment  of  the  fee  pre- 
scribed, appeal  to  the  Commissioner  in  person.  [See  prior 
patent  statutes  :  Section  47,  1870  ;  Section  2,  1861.] 

SECTION  4911.  If  such  party,  except  a  party  to  an  interfer- 
ence, is  dissatisfied  with  the  decision  of  the  Commissioner,  he 
may  appeal  to  the  Supreme  Court  of  the  District  of  Columbia, 
sitting  in  bane.  [See  prior  patent  statutes  :  Section  48, 1870  ; 
Section  1,  1852  ;  Section  11,  1839.] 

SECTION  4912.  When  an  appeal  is  taken  to  the  Supreme 
Court  of  the  District  of  Columbia,  the  appellant  shall  give 
notice  thereof  to  the  Commissioner,  and  file  in  the  Patent- 
Office,  within  such  time  as  the  Commissioner  shall  appoint, 
his  reasons  of  appeal,  specifically  set  forth  in  writing.  [See 
prior  patent  statute  :  Section  49,  1870.] 

SECTION  4913.  The  court  shall,  before  hearing  such  appeal, 
give  notice  to  the  Commissioner  of  the  time  and  place  of  the 
hearing,  and  on  receiving  such  notice  the  Commissioner  shall 
give  notice  of  such  time  and  place  in  such  manner  as  the  court 
may  prescribe,  to  all  parties  who  appear  to  be  interested 
therein.  The  party  appealing  shall  lay  before  the  court  certi- 
fied copies  of  all  the  original  papers  and  evidence  in  the  case, 
and  the  Commissioner  shall  furnish  the  court  with  the  grounds 
of  his  decision,  fully  set  forth  in  writing,  touching  all  the 
points  involved  by  the  reasons  of  appeal.  And  at  the  request 
of  any  party  interested,  or  of  the  court,  the  Commissioner  and 
the  examiners  may  be  examined  under  oath,  in  explanation  of 
the  principles  of  the  thing  for  which  a  patent  is  demanded. 
[See  prior  patent  statute  :  Section  51,  1870.] 

SECTION  4914.  The  court,  on  petition,  shall  hear  and  deter- 
mine such  appeal,  and  revise  the  decision  appealed  from  in  a 
summary  way,  on  the  evidence  produced  before  the  Commis- 
sioner, at  such  early  and  convenient  time  as  the  court  may  ap- 
point ;  and  the  revision  shall  be  confined  to  the  points  set 
forth  in  the  reasons  of  appeal.  After  hearing  the  case  tho 
court  shall  return  to  the  Commissioner  a  certificate  of  its  pro- 


652  THE   PATENT   STATUTES. 

ceedings  and  decision,  which  shall  be  entered  of  record  in  the 
Patent-Office,  and  shall  govern  the  further  proceedings  in  the 
case.  But  no  opinion  or  decision  of  the  court  in  any  such  case 
shall  preclude  any  person  interested  from  the  right  to  contest 
the  validity  of  such  patent  in  any  court  wherein  the  same  may 
be  called  in  question.  [See  prior  patent  statute  :  Section  50,> 
1870,] 

SECTION  4915.  "Whenever  a  patent  on  application  is  refused, 
either  by  the  Commissioner  of  Patents  or  by  the  Supreme 
Court  of  the  District  of  Columbia  upon  appeal  from  the  Com- 
missioner, the  applicant  may  have  remedy  by  bill  in  equity  ; 
and  the  court  having  cognizance -thereof,  on  notice  to  adverse 
parties  and  other  due  proceedings  had,  may  adjudge  that  such 
applicant  is  entitled,  according  to  law,  to  receive  a  patent  for 
his  invention,  as  specified  in  his  claim,  or  for  any  part  there- 
of, as  the  facts  in  the  case  may  appear.  And  such  adjudica- 
tion, if  it  be  in  favor  of  the  right  of  the  applicant,  shall 
authorize  the  Commissioner  to  issue  such  patent  on  the  appli- 
cant filing  in  the  Patent-Office  a  copy  of  the  adjudication,  and 
otherwise  complying  with  the  requirements  of  law.  In  all 
cases,  where  there  is  no  opposing  party,  a  copy  of  the  bill 
shall  be  served  on  the  Commissioner  ;  and  all  the  expenses  of 
the  proceeding  shall  be  paid  by  the  applicant,  whether  the 
final  decision  is  in  his  favor  or  not.  [See  Revised  Statutes 
and  prior  patent  statutes  :  Section  52,  1870  ;  Section  10, 
1839.] 

SECTION  4916.  "Whenever  any  patent  is  inoperative  or  in- 
valid, by  reason  of  a  defective  or  insufficient  specification,  or 
by  reason  of  the  patentee  claiming  as  his  own  invention  or  dis- 
covery more  than  he  had  a  right  to  claim  as  new,  if  the  error 
has  arisen  by  inadvertence,  accident,  or  mistake,  and  without 
any  fraudulent  or  deceptive  intention,  the  Commissioner  shall, 
on  the  surrender  of  such  patent  and  the  payment  of  the  duty 
required  by  law,  cause  a  new  patent  for  the  same  invention, 
and  in  accordance  with  the  corrected  specification,  to  be  issued 
to  the  patentee,  or,  in  the  case  of  his  death  or  of  an  assign- 
ment of  the  whole  or  any  undivided  part  of  the  original  pat- 
ent, then  to  his  executors,  administrators,  or  assigns,  for  the 


THE   REVISED   STATUTES.  653 

tmexpired  part  of  the  term  of  the  original  patent.  Such  sur- 
render shall  take  effect  upon  the  issue  of  the  amended  patent. 
The  Commissioner  may,  in  his  discretion,  cause  several  patents 
to  be  issued  for  distinct  and  separate  parts  of  the  thing  pat- 
ented, upon  demand  of  the  applicant,  and  upon  payment  of 
the  required  fee  for  a  re-issue  for  each  of  such  re-issued  let- 
ters-patent. The  specifications  and  claim  in  every  such  case 
shall  be  subject  to  revision  and  restriction  in  the  same  manner 
as  original  applications  are.  Every  patent  so  re-issued,  to- 
gether with  the  corrected  specification,  shall  have  the  same 
effect  and  operation  in  law,  on  the  trial  of  all  actions  for  causes 
thereafter  arising,  as  if  the  same  had  been  originally  filed  in 
such  corrected  form  ;  but  no  new  matter  shall  be  introduced 
into  the  specification,  nor  in  case  of  a  machine-patent  shall  the 
model  or  drawings  be  amended,  except  each  by  the  other  ;  but 
when  there  is  neither  model  nor  drawing,  amendments  may  be 
made  upon  proof  satisfactory  to  the  Commissioner  that  such 
new  matter  or  amendment  was  a  part  of  the  original  inven- 
tion, and  was  omitted  from  the  specification  by  inadvertence, 
accident,  or  mistake,  as  aforesaid.  [See  prior  patent  statutes  : 
Section  53,  1870  ;  Sections  5  and  8,  1837  ;  Section  13,  1836  ; 
Section  3,  1832.] 

SECTION  4917.  Whenever,  through  inadvertence,  accident, 
or  mistake,  and  without  any  fraudulent  or  deceptive  intention, 
a  patentee  has  claimed  more  than  that  of  which  he  was  the 
original  or  first  inventor  or  discoverer,  his  patent  shall  be  valid 
for  all  that  part  which  is  truly  and  justly  his  own,  provided 
the  same  is  a  material  or  substantial  part  of  the  thing  pat- 
ented ;  and  any  such  patentee,  his  heirs  or  assigns,  whether 
of  the  whole  or  any  sectional  interest  therein,  may,  on  pay- 
ment of  the  fee  required  by  law,  make  disclaimer  of  such 
parts  of  the  thing  patented  as  he  shall  not  choose  to  claim  or 
to  hold  by  virtue  of  the  patent  or  assignment,  stating  therein 
the  extent  of  his  interest  in  such  patent.  Such  disclaimer 
shall  be  in  writing,  attested  by  one  or  more  witnesses,  and 
recorded  in  the  Patent-Office  ;  and  it  shall  thereafter  be  con- 
sidered as  part  of  the  original  specification  to  the  extent  of  the 
interest  possessed  by  the  claimant  and  by  those  claiming  under 


654  THE    PATENT    STATUTES. 

him  after  the  record  thereof.  But  no  such  disclaimer  shall 
affect  any  action  pending  at  the  time  of  its  being  filed,  except 
so  far  as  may  relate  to  the  question  of  unreasonable  neglect  or 
delay  in  filing  it.  [See  prior  patent  statutes  :  Section  54, 
1870  ;  Section  7,  1837.] 

SECTION  4918.  Whenever  there  are  interfering  patents,  any 
person  interested  in  any  one  of  them,  or  in  the  working  of  the 
invention  claimed  under  either  of  them,  may  have  relief 
against  the  interfering  patentee,  and  all  parties  interested 
under  him,  by  suit  in  equity  against  the  owners  of  the  inter- 
fering patent  ;  and  the  court,  on  notice  to  adverse  parties, 
and  other  due  proceedings  had  according  to  the  course  of 
equity,  may  adjudge  and  declare  either  of  the  patents  void  in 
whole  or  in  part,  or  inoperative,  or  invalid  in  any  particular 
part  of  the  United  States,  according  to  the  interest  of  the 
parties  in  the  patent  or  the  invention  patented.  But  no  such 
judgment  or  adjudication  shall  affect  the  right  of  any  person 
except  the  parties  to  the  suit  and  those  deriving  title  under 
them  subsequent  to  the  rendition  of  such  judgment.  [See 
prior  patent  statutes  :  Section  58,  1870  ;  Section  16,  1836.] 

SECTION  4919.  Damages  for  the  infringement  of  any  patent 
may  be  recovered  by  action  on  the  case,  in  the  name  of  the 
party  interested,  either  as  patentee,  assignee,  or  grantee.  And 
whenever  in  any  such  action  a  verdict  is  rendered  for  the 
plaintiff,  the  court  may  enter  judgment  thereon  for  any  sum 
above  the  amount  found  by  the  verdict  as  the  actual  damages 
sustained,  according  to  the  circumstances  of  the  case,  not  ex- 
ceeding three  times  the  amount  of  such  verdict,  together  with 
the  costs.  [See  prior  patent  statutes  :  Section  55,  1870  ;  Sec- 
tion 14,  1836  ;  Section  3,  1800  ;  Section  5,  1793  ;  Section  4, 
1790.] 

SECTION  4920.  In  any  action  for  infringement  the  defendant 
may  plead  the  general  issue,  and  having  given  notice  in  writ- 
ing to  the  plaintiff  or  his  attorney,  thirty  days  before,  may 
prove  on  trial  any  one  or  more  of  the  following  special  mat- 
ters : 

First.  That  for  the  purpose  of  deceiving  the  public  the  de- 
scription and  specification  filed  by  the  patentee  in  the  Patent- 


THE   REVISED   STATUTES.  655 

Office  was  made  to  contain  less  than  the  whole  truth  relative 
to  his  invention  or  discovery,  or  more  than  is  necessary  to  pro- 
duce the  desired  effect ;  or, 

Second.  That  he  had  surreptitiously  or  unjustly  obtained 
the  patent  for  that  which  was  in  fact  invented  by  another, 
who  was  using  reasonable  diligence  in  adapting  and  perfecting 
the  same  ;  or, 

Third.  That  it  had  been  patented  or  described  in  some 
printed  publication  prior  to  his  supposed  invention  or  discov- 
ery thereof  ;  or, 

Fourth.  That  he  was  not  the  original  and  first  inventor  or 
discoverer  of  any  material  and  substantial  part  of  the  thing 
patented  ;  or, 

Fifth.  That  it  had  been  in  public  use  or  on  sale  in  this 
country  for  more  than  two  years  before  his  application  for  a 
patent,  or  had  been  abandoned  to  the  public. 

And  in  notices  as  to  proof  of  previous  invention,  knowledge, 
or  use  of  the  thing  patented,  the  defendant  shall  state  the 
names  of  patentees  and  the  dates  of  their  patents,  and  when 
granted,  and  the  names  and  residences  of  the  persons  alleged 
to  have  invented,  or  to  have  had  the  prior  knowledge  of  the 
thing  patented,  and  where  and  by  whom  it  had  been  used  ; 
and  if  any  one  or  more  of  the  special  matters  alleged  shall  be 
found  for  the  defendant,  judgment  shall  be  rendered  for  him 
with  costs.  And  the  like  defences  may  be  pleaded  in  any  suit 
in  equity  for  relief  against  an  alleged  infringement ;  and 
proofs  of  the  same  may  be  given  upon  like  notice  in  the  an- 
swer of  the  defendant,  and  with  the  like  effect.  [See  prior 
patent  statutes  :  Section  61,  1870  ;  Section  15,  1836  ;  Section 
6,  1793  ;  Section  6,  1790.] 

SECTION  4921.  The  several  courts  vested  with  jurisdiction  of 
cases  arising  under  the  patent  laws  shall  have  power  to  grant 
injunctions  according  to  the  course  and  principles  of  courts  of 
equity,  to  prevent  the  violation  of  any  right  secured  by  pat- 
ent, on  such  terms  as  the  court  may  deem  reasonable  ;  and 
upon  a  decree  being  rendered  in  any  such  case  for  an  infringe- 
ment, the  complainant  shall  be  entitled  to  recover,  in  addition 
to  the  profits  to  be  accounted  for  by  the  defendant,  the  dam- 


656  THE    PATENT    STATUTES. 

ages  the  complainant  has  sustained  thereby  ;  and  the  court 
shall  assess  the  same  or  cause  the  same  to  be  assessed  under  its 
direction.  And  the  court  shall  have  the  same  power  to  in- 
crease such  damages,  in  its  discretion,  as  is  given  to  increase 
the  damages  found  by  verdicts  in  actions  in  the  nature  of 
actions  of  trespass  upon  the  case.  [See  prior  patent  statutes  : 
Section  55,  1870  ;  Section  17,  1836  ;  Section  1,  1819.] 

SECTION  4922.  Whenever,  through  inadvertence,  accident, 
or  mistake,  and  without  any  willful  default  or  intent  to  de- 
fraud or  mislead  the  public,  a  patentee  has,  in  his  specifica- 
tion, claimed  to  be  the  original  and  first  inventor  or  discoverer 
of  any  material  or  substantial  part  of  the  thing  patented,  of 
which  he  was  not  the  original  and  first  inventor  or  discoverer, 
every  such  patentee,  his  executors,  administrators,  and 
assigns,  whether  of  the  whole  or  any  sectional  interest  in  the 
patent,  may  maintain  a  suit  at  law  or  in  equity,  for  the  in- 
fringement of  any  part  thereof,  which  was  bona  fide  his  own, 
if  it  is  a  material  and  substantial  part  of  the  thing  patented, 
and  definitely  distinguishable  from  the  parts  claimed  without 
right,  notwithstanding  the  specifications  may  embrace  more 
than  that  of  which  the  patentee  was  the  first  inventor  or  dis- 
coverer. But  in  every  such  case  in  which  a  judgment  or  de- 
cree shall  be  rendered  for  the  plaintiff,  no  costs  shall  be  recov- 
ered unless  the  proper  disclaimer  has  been  entered  at  the 
Patent-Office  before  the  commencement  of  the  suit.  But  no 
patentee  shall  be  entitled  to  the  benefits  of  this  section  if  he 
has  unreasonably  neglected  or  delayed  to  enter  a  disclaimer. 
[See  prior  patent  statutes  :  Section  60,  1870  ;  Section  9,  1837.] 

SECTION  4923.  "Whenever  it  appears  that  a  patentee,  at  the 
time  of  making  his  application  for  the  patent,  believed  himself 
to  be  the  original  and  first  inventor  or  discoverer  of  the  thing 
patented,  the  same  shall  not  be  held  to  be  void  on  account  of 
the  invention  or  discovery,  or  any  part  thereof,  having  been 
known  or  used  in  a  foreign  country,  before  his  invention  or 
discovery  thereof,  if  it  had  not  been  patented  or  described  in 
a  printed  publication.  [See  prior  patent  statutes  :  Section  62, 
1870  ;  Section  15,  1836.] 

SECTION  4924.  Where  the  patentee  of  any  invention  or  dis- 


THE   REVISED   STATUTES  657 

covery,  the  patent  for  which  was  granted  prior  to  the  second 
day  of  March,  eighteen  hundred  and  sixty-one,  shall  desire  an 
extension  of  this  patent  beyond  the  original  term  of  its  limita- 
tion, he  shall  make  application  therefor,  in  writing,  to  the 
Commissioner  of  Patents,  setting  forth  the  reasons  why  such 
extension  should  be  granted  ;  and  he  shall  also  furnish  a 
written  statement  under  oath  of  the  ascertained  value  of  the 
invention  or  discovery,  and  of  his  receipts  and  expenditures  on 
account  thereof,  sufficiently  in  detail  to  exhibit  a  true  and 
faithful  account  of  the  loss  and  profit  in  any  manner  accruing 
to  him  by  reason  of  the  invention  or  discovery.  Such  appli- 
cation shall  be  tiled  not  more  than  six  months  nor  less  than 
ninety  days  before  the  expiration  of  the  original  term  of  the 
patent ;  and  no  extension  shall  be  granted  after  the  expiration  of 
the  original  term.  [See  prior  patent  statutes :  Section  63,  1870 ; 
Section  1,  1848  ;  Section  18,  1836  ;  Section  2,  July  3,  1832.] 

SECTION  4925.  Upon  the  receipt  of  such  application,  and 
the  payment  of  the  fees  required  by  law,  the  Commissioner 
shall  cause  to  be  published  in  one  newspaper  in  the  city  of 
Washington,  and  in  such  other  papers  published  in  the  section 
of  the  country  most  interested  adversely  to  the  extension  of 
the  patent  as  he  may  deem  proper,  for  at  least  sixty  days  prior 
to  the  day  set  for  hearing  the  case,  a  notice  of  such  applica- 
tion, and  of  the  time  and  place  when  and  where  the  same  will 
be  considered,  that  any  person  may  appear  and  show  cause 
why  the  extension  should  not  be  granted.  [See  prior  patent 
statutes  :  Section  64,  1870  ;  Section  18,  1836.] 

SECTION  4926.  Upon  the  publication  of  the  notice  of  an  ap- 
plication for  an  extension,  the  Commissioner  shall  refer  the 
case  to  the  principal  examiner  having  charge  of  the  class  of 
inventions  to  which  it  belongs,  who  shall  make  the  Commis- 
sioner a  full  report  of  the  case,  stating  particularly  whether 
the  invention  or  discovery  was  new  and  patentable  when  the 
original  patent  was  granted.  [See  prior  patent  statutes  :  Sec- 
tion 65,  1870  ;  Section  1.  1848  ;  Section  18,  1836.] 

SECTION  4927.  The  Commissioner  shall,  at  the  time  and 
place  designated  in  the  published  notice,  hear  and  decide  upon 
the  evidence  produced,  both  for  and  against  the  extension  ; 


658  THE    PATENT    STATUTES. 

and  if  it  shall  appear  to  the  satisfaction  of  the  Commissioner 
that  the  patentee,  without  neglect  or  fault  on  his  part,  has 
failed  to  obtain  from  the  use  and  sale  of  his  invention  or  dis- 
covery a  reasonable  remuneration  for  the  time,  ingenuity,  and 
expense  bestowed  upon  it,  and  the  introduction  of  it  into  use, 
and  that  it  is  just  and  proper,  having  due  regard  to  the  public 
interest,  that  the  term  of  the  patent  should  be  extended,  the 
Commissioner  shall  make  a  certificate  thereon,  renewing  and 
extending  the  patent  for  the  term  of  seven  years  from  the  ex- 
piration of  the  first  term.  Such  certificate  shall  be  recorded 
in  the  Patent- Office  ;  and  thereupon  such  patent  shall  have 
the  same  effect  in  law  as  though  it  had  been  originally  granted 
for  twenty-one  years.  [See  prior  patent  statutes  :  Section  66, 
1870  ;  Section  18,  1836.] 

SECTION  4928.  The  benefit  of  the  extension  of  a  patent  shall 
extend  to  the  assignees  and  grantees  of  the  right  to  use  the 
thing  patented,  to  the  extent  of  their  interest  therein.  [See 
prior  patent  statutes  :  Section  67,  1870  ;  Section  18,  1836.] 

SECTION  4929.  Any  person  who,  by  his  own  industry, 
genius,  efforts,  and  expense,  has  invented  and  produced  any 
new  and  original  design  for  a  manufacture,  bust,  statue,  alto- 
relievo,  or  bas-relief  ;  any  new  and  original  design  for  the 
printing  of  woollen,  silk,  cotton,  or  other  fabrics  ;  any  new 
and  original  impression,  ornament,  patent,  print,  or  picture  to 
be  printed,  painted,  cast,  or  otherwise  placed  on  or  worked 
into  any  article  of  manufacture  ;  or  any  new,  useful,  and  orig- 
inal shape  or  configuration  of  any  article  of  manufacture,  the 
same  not  having  been  known  or  used  by  others  before  his  in- 
vention or  production  thereof,  or  patented  or  described  in  any 
printed  publication,  may,  upon  payment  of  the  fee  prescribed, 
and  other  due  proceedings  had  the  same  as  in  cases  of  inven- 
tions or  discoveries,  obtain  a  patent  therefor.  [See  prior  pat- 
ent statutes  :  Section  71,  1870  ;  Section  11,  March  2,  1861  ; 
Section  3,  1842.] 

SECTION  4930.  The  Commissioner  may  dispense  with  models 
of  designs  when  the  design  can  be  sufficiently  represented  by 
drawings  or  photographs.  [See  prior  patent  statute  :  Section 
72,  1870.] 


THE  BEVI8ED   STATUTES.  659 

SECTION  4931.  Patents  for  designs  may  be  granted  for  the 
term  of  three  years  and  six  months,  or  for  seven  years,  or  for 
fourteen  years,  as  the  applicant  may,  in  his  application,  elect. 
[See  prior  patent  statutes  :  Section  73,  1870  ;  Section  11, 
1861  ;  Section  3,  1842.] 

SECTION  4932.  Patentees  of  designs  issued  prior  to  the  sec- 
ond day  of  March,  eighteen  hundred  and  sixty -one,  shall  be 
entitled  to  extension  of  their  respective  patents  for  the  term 
of  seven  years,  in  the  same  manner  and  under  the  same 
restrictions  as  are  provided  for  the  extension  of  patents  for  in- 
ventions or  discoveries,  issued  prior  to  the  second  day  of 
March,  eighteen  hundred  and  sixty-one.  [See  prior  patent 
statutes  :  Section  74,  1870  ;  Section  11,  March  2,  1861.] 

SECTION  4933.  All  the  regulations  and  provisions  which 
apply  to  obtaining  or  protecting  patents  for  inventions  or  dis- 
coveries not  inconsistent  with  the  provisions  of  this  Title,  shall 
apply  to  patents  for  designs.  [See  prior  patent  statute  :  Sec- 
tion 76,  1870.] 

SECTION  4934.  The  following  shall  be  the  rate  for  patent- 
fees  : 

On  filing  each  original  application  for  a  patent,  except  in 
design  cases,  fifteen  dollars. 

On  issuing  each  original  patent,  except  in  design  cases, 
twenty  dollars. 

In  design  cases  :  For  three  years  and  six  months,  ten  dol- 
lars ;  for  seven  years,  fifteen  dollars  ;  for  fourteen  years, 
thirty  dollars. 

On  filing  each  caveat,  ten  dollars. 

On  every  application  for  the  re-issue  of  a  patent,  thirty  dol- 
lars. 

On  filing  each  disclaimer,  ten  dollars. 

On  every  application  for  the  extension  of  a  patent,  fifty 
dollars. 

On  the  granting  of  every  extension  of  a  patent,  fifty  dollars. 

On  an  appeal  for  the  first  time  from  the  primary  examiners 
to  the  examiners-in-chief,  ten  dollars. 

On  every  appeal  from  the  examiners-in-chief  to  the  Com- 
missioner, twenty  dollars. 


660  THE    PATENT    STATUTES. 

For  certified  copies  of  patents  and  other  papers,  including 
certified  printed  copies,  ten  cents  per  hundred  words. 

For  recording  every  assignment,  agreement,  power  of  attor- 
ney, or  other  paper,  of  three  hundred  words  or  under,  one 
dollar  ;  of  over  three  hundred  and  under  one  thousand  words, 
two  dollars  ;  of  over  one  thousand  words,  three  dollars. 

For  copies  of  drawings,  the  reasonable  cost  of  making  them. 
[See  prior  patent  statutes  :  Section  2,  March  24,  1871  ;  Sec- 
tions 68  and  75,  1870  ;  Section  1,  1866  ;  Section  10,  March  2, 
1861  ;  Section  2,  1848  ;  Section  8,  1839  ;  Sections  4,  9,  11, 
1836  ;  Section  11,  1793  ;  Section  7,  1790.] 

SECTION  4935.  Patent-fees  may  be  paid  to  the  Commissioner 
of  Patents,  or  to  the  Treasurer  or  any  of  the  assistant  treas- 
urers of  the  United  States,  or  to  any  of  the  designated  deposi- 
taries, national  banks,  or  receivers  of  public  money,  designated 
by  the  Secretary  of  the  Treasury  for  that  purpose  ;  and  such 
officer  shall  give  the  depositor  a  receipt  or  certificate  of  deposit 
therefor.  All  money  received  at  the  Patent -Office,  for  any 
purpose,  or  from  any  source  whatever,  shall  be  paid  into  the 
Treasury  as  received,  without  any  deduction  whatever.  [See 
prior  patent  statutes  :  Section  69,  1870  ;  Section  14,  1837.] 

SECTION  4936.  The  Treasurer  of  the  United  States  is  author- 
ized  to  pay  back  any  sum  or  sums  of  money  to  any  person 
who  has  through  mistake  paid  the  same  into  the  Treasury,  or 
to  any  receiver  or  depositary,  to  the  credit  of  the  Treasury,  as 
for  fees  accruing  at  the  Patent-Office,  upon  a  certificate 
thereof  being  made  to  the  Treasurer  by  the  Commissioner  of 
Patents.  [See  prior  patent  statutes  :  Section  69,  1870  ;  Sec- 
tion 1,  1842.] 

APPROVED  June  22,  1874. 

PATENT  ACT   OF   FEBRUARY   16,    1875. 

18  STATUTES  AT  LARGE,  PART  3,  316. 

Section  2  of  an  Act  to  facilitate  the  disposition  of  cases  in 
the  Supreme  Court  of  the  United  States,  and  for  other 
purposes. 
SECTION  2.  The  said  [circuit]  courts,  when  sitting  in  equity 


THE  PATENT  ACT  OF  1875.  661 

for  the  trial  of  patent  causes,  may  empanel  a  jury  of  not  less 
than  five  and  not  more  than  twelve  persons,  subject  to  such 
general  rules  in  the  premises,  as  may  from  time  to  time  be 
made  by  the  Supreme  Court,  and  submit  to  them  such  ques- 
tions of  fact  arising  in  such  cause  as  such  circuit  court  shall 
deem  expedient  ;  and  the  verdict  of  such  jury  shall  be  treated 
and  proceeded  upon  in  the  same  manner  and  with  the  same 
effect  as  in  the  case  of  issues  sent  from  chancery  to  a  court  of 
law  and  returned  with  such  findings. 
APPROVED  February  16,  1875. 

PATENT  ACT   OF   1888. 
25   STATUTES   AT  LARGE,    40. 

An  Act  to  amend  section  four  thousand  eight  hundred  and 
eighty-three  of  the  Revised  Statutes,  to  enable  the  Assist- 
ant Secretary  of  the  Interior  to  sign  patents. 

Be  it  enacted  by  the  Senate  and  House  of  Representatives 
of  the  United  States  of  America  in  Congress  assembled,  That 
section  four  thousand  eight  hundred  and  eighty-three  of  the 
Revised  Statutes  is  hereby  amended  by  inserting  after  the 
words  "  Secretary  of  the  Interior,"  where  they  occur  therein, 
the  following  words  :  "or  under  his  direction  by  one  of  the 
Assistant  Secretaries  of  the  Interior,"  so  that  the  said  section 
as  amended  will  read  as  follows  : 

"  SECTION  4883.  All  patents  shall  be  issued  in  the  name  of 
the  United  States  of  America,  under  the  seal  of  the  Patent 
Office,  and  shall  be  signed  by  the  Secretary  of  the  Interior  or 
under  his  direction  by  one  of  the  Assistant  Secretaries  of  the 
Interior,  and  countersigned  by  the  Commissioner  of  Patents, 
and  they  shall  be  recorded,  together  with  the  specifications,  in 
the  Patent  Office,  in  books  to  be  kept  for  that  purpose." 

APPROVED  February  18,  1888. 


FORMS  OF  PATENT  PLEADINGS. 


DECLARATION. 

CIRCUIT    COURT    OF    THE    UNITED    STATES, 
FOR  THE  DISTRICT  OF  CONNECTICUT. 

OF  THE   SEPTEMBER   TERM  OF   THE  YEAR  EIGHTEEN  HUNDRED  AND 
EIGHTY-THREE. 

DISTRICT  OF  CONNECTICUT,  ss. 

THOMAS  TRACY,  of  Hartford  Connecticut,  who  is  a  citizen 
of  the  State  of  Connecticut,  and  of  the  United  States,  plaintiff 
in  this  suit,  by  John  Jay  his  attorney,  complains  of  the  East- 
ern and  Western  Railroad  Company,  which  is  a  corporation 
created  and  existing  in  due  form  of  law  in  the  States  of  Con- 
necticut and  Rhode  Island,  defendant,  of  a  plea  of  trespass  on 
the  case. 

For  that,  Samuel  Sinclair,  of  New  Haven  Connecticut, 
before  and  at  the  time  of  his  application  for  the  here- 
inafter mentioned  letters  patent,  was  a  citizen  of  the  United 
States,  and  was  the  true  original  and  first  inventor  of  a 
certain  new  and  useful  apparatus,  fully  described  in  the 
specification  of  the  letters  patent  hereinafter  mentioned, 
and  named  therein  an  "Improved  railroad  car-brake,"  and 
which  was  not  known  or  used  in  this  country,  and  not  pat- 
ented or  described  in  any  printed  publication  in  this  or  any 
foreign  country,  before  his  invention  thereof  ;  and  was  not 


DECLARATION.  663 

in  pnblic  use  or  on  sale  more  than  two  years  prior  to  his  appli- 
cation for  letters  patent  of  the  United  States  therefor. 

And  for  that,  heretofore,  to  wit :  on  the  first  day  of  June, 
1866,  and  before  the  issuing  of  the  hereinafter  mentioned  let- 
ters patent,  the  said  Samuel  Sinclair,  by  an  instrument  in 
writing  duly  executed  and  delivered  by  him,  and  bearing  date 
on  the  last  named  day,  did  assign  to  Rufus  Russell,  of  Meri- 
den  Connecticut,  all  the  right,  title,  and  interest  whatever  in 
said  invention  ;  and  for  that,  said  instrument  in  writing  was 
duly  recorded  in  the  Patent  Office  on  the  tenth  day  of  June, 
1866. 

And  for  that,  on  the  sixteenth  day  of  July,  1866,  letters 
patent  for  said  invention,  in  due  form  of  law,  were,  on  the 
application  of  said  Samuel  Sinclair,  issued  and  delivered  to 
said  Rufus  Russell,  in  the  name  of  the  United  States  of 
America,  and  under  the  seal  of  the  Patent  Office  of  the 
United  States,  and  were  signed  by  the  Secretary  of  the  Inte- 
rior of  the  United  States,  and  countersigned  by  the  Commis- 
sioner of  Patents  ;  and  for  that,  said  letters  patent  did  grant  to 
said  Rufus  Russell,  his  heirs  or  assigns,  for  the  term  of  seven- 
teen years,  the  exclusive  right  to  make,  use,  and  vend  the  said 
invention  throughout  the  United  States,  and  the  Territories 
thereof. 

And  for  that,  the  said  letters  patent  were  inoperative  by 
reason  of  an  insufficient  specification  ;  which  error  arose  from 
inadvertence,  and  without  any  fraudulent  or  deceptive  inten- 
tion ;  and  for  that,  the  said  Rufus  Russell  therefore  duly  sur- 
rendered said  letters  patent,  whereupon  the  Commissioner  of 
Patents,  on  the  fifteenth  day  of  October,  1866,  caused  new 
letters  patent  for  the  same  invention,  and  in  accordance  with 
a  corrected  specification,  to  be  issued  to  said  Rufus  Russell, 
for  the  unexpired  part  of  the  term  of  said  original  letters 
patent. 

And  for  that,  through  mistake,  and  without  any  fraudulent 
or  deceptive  intention,  the  said  Samuel  Sinclair,  in  his  appli- 
cation for  the  said  original  letters  patent,  claimed  to  be  the 
true  original  and  first  inventor  of  a  certain  part  of  said  appa- 
ratus of  which  he  was  not  the  first  inventor,  and  which  claim 


664  FORMS  OF  PATENT  PLEADINGS. 

was  repeated  in  said  reissue  letters  patent,  and  numbered 
"  2  "  therein  ;  and  for  that,  the  said  Rufus  Kussell,  without 
unreasonable  delay,  entered  in  the  Patent  Office,  before  the 
commencement  of  this  suit,  a  disclaimer  in  writing  of  the  said 
part  covered  by  the  said  second  claim  of  said  reissue  letters 
patent. 

And  the  plaintiff  says,  that  the  said  Rufus  Russell,  before 
the  committing  of  the  grievances  hereinafter  mentioned,  to 
wit  :  on  the  sixteenth  day  of  September  1868,  by  a  certain 
instrument  in  writing,  duly  executed  and  delivered  by  him, 
and  bearing  date  on  said  last  mentioned  day,  did  grant  to  the 
said  plaintiff,  the  entire  right,  title,  and  interest  in  and  to  the 
then  unexpired  portion  of  the  term  of  said  reissue  patent,  in 
and  throughout  the  States  of  Connecticut  and  Rhode  Island  ; 
which  instrument  in  writing  was  recorded  in  the  Patent  Office 
on  the  thirty -first  day  of  October,  1868. 

And  the  plaintiff  further  says,  that  always  hitherto,  from 
the  time  of  the  execution  of  the  said  last  mentioned  instru- 
ment, up  to  the  expiration  of  the  said  reissue  letters  patent,  he 
lias  vended  to  others  the  right  to  make  and  use  specimens  of 
said  apparatus,  to  his  great  advantage  and  profit. 

Yet  the  defendant,  well  knowing  the  premises,  but  contriv- 
ing to  injure  the  plaintiff,  heretofore,  to  wit  :  on  and  after  the 
first  day  of  January,  1869,  and  up  to  and  on  the  sixteenth  day 
of  July,  1883,  and  during  and  within  the  term  of  seven- 
teen years  mentioned  in  said  letters  patent,  and  after  the 
granting  of  said  reissue  letters  patent,  and  after  the  execution 
of  the  said  grant  to  the  plaintiff,  and  before  the  bringing  of 
this  suit,  and  within  those  parts  of  the  United  States  covered 
by  the  last  mentioned  grant,  unlawfully,  wrongfully,  and  in- 
juriously, and  with  intent  to  deprive  the  plaintiff  of  the  royal- 
ties which  he  might  and  otherwise  would  have  derived  from 
the  sale  of  rights  to  make  and  use  specimens  of  said  apparatus, 
and  without  the  license  of  the  plaintiff  or  of  the  said  Rufus 
Russell,  and  against  the  will  of  the  plaintiff,  did  make,  and 
did  use,  and  did  cause  to  be  made,  and  did  cause  to  be  used, 
sundry  specimens  of  said  apparatus,  and  of  machines  which 
contained  and  employed  substantially  the  invention  covered  by 


PLEA   IN   BAB.  665 

said  reissue  letters  patent  after  said  disclaimer,  in  infringement 
of  the  said  exclusive  rights  secured  to  the  said  Ruius  Russell 
by  the  letters  patent  aforesaid,  and  granted  by  him  to  the  said 
plaintiff,  as  hereinbefore  set  forth,  and  contrary  to  the  statute 
of  the  United  States  in  such  cases  made  and  provided  ;  where- 
by the  plaintiff  has  been  and  is  greatly  injured,  and  has  been 
deprived  of  large  royalties  which  he  might  and  otherwise 
would  have  derived  from  the  sale  of  rights  to  make  and  use 
specimens  of  said  apparatus,  and  has  sustained  actual  damages 
thereby  to  the  amount  of  Three  Thousand  Dollars. 

"Wherefore, *by  force  of  the  statutes  of  the  United  States,  a 
right  of  action  has  accrued  to  the  said  plaintiff  to  recover  the 
said  actual  damages,  and  such  additional  amount,  not  exceed 
ing,  in  the  whole,  three  times  the  amount  of  such  actual  dam- 
ages, as  the  court  may  see  fit  to  adjudge  and  order,  besides 
costs. 

Yet  the  defendant,  though  often  requested  so  to  do,  has 
never  paid  the  same,  nor  any  part  thereof,  but  has  refused, 
and  still  refuses  so  to  do,  and  therefore  the  plaintiff  brings  his 

suit. 

JOHN   JAY, 

Attorney  for  the  Plaintiff. 

PLEA  IN   BAR. 

CIRCUIT    COURT    OF    THE    UNITED    STATES, 
FOR  THE  DISTRICT  OF  CONNECTICUT. 


THOMAS  TRACY 

Trespass  on  the 

Case. 

THE  EASTERN  AND  WESTERN   RAILROAD 
COMPANY. 


And   the   said   defendant,   by   Richard    Ray  its   attorney, 


666  FORMS  OF  PATENT  PLEADINGS. 

comes  and  defends  the  wrong  and  injury  when,  etc. ,  and  says, 
that  it  is  not  guilty  of  the  supposed  grievances  above  laid  to 
its  charge,  or  any  or  either  of  them,  or  any  part  thereof,  in 
manner  and  form  as  the  said  plaintiff  has  above  thereof  com- 
plained against  it.  And  of  this  the  defendant  puts  itself  upon 
the  country. 

And  for  a  further  plea  in  this  behalf,  the  defendant  says, 
that  the  apparatus  covered  by  the  reissue  letters  patent  men- 
tioned  in  the  plaintiff's  declaration,  was  not  an  invention  when 
produced  by  the  said  Samuel  Sinclair.  And  of  this  the  de- 
fendant puts  itself  upon  the  country. 

And  for  a  further  plea  in  this  behalf,  the  defendant  says,  that 
the  said  apparatus  was  not  novel  when  produced  by  the  said 
Samuel  Sinclair  ;  for  that,  an  apparatus  substantially  identi- 
cal with  it  in  character,  was  previously  patented  in  letters 
patent  of  the  United  States,  granted  to  Mason  Montgomery, 
May  16,  1856  ;  and  for  that,  another  like  apparatus  was  pre- 
viously described  on  page  777  of  a  certain  printed  book  enti- 
tled "  The  Practical  Railroad  Carriage  Builder,"  published  in 
London,  England,  in  the  year  1858,  by  William  Wright,  of 
Paternoster  Row  ;  and  for  that,  still  another  like  apparatus 
was  previously  known  and  used  by  Nathan  N  orris,  of  Roches- 
ter New  York,  on  the  New  York  Central  Railroad,  in  said 
Rochester,  and  elsewhere  on  said  railroad  in  the  State  of  New 
York,  in  the  year  1859.  And  of  this  the  defendant  puts  itself 
upon  the  country. 

And  for  a  further  plea  in  this  behalf,  the  defendant  says, 
that  said  Samuel  Sinclair  actually  abandoned  his  said  alleged 
invention,  before  he  made  any  application  for  letters  patent 
therefor.  And  this  the  defendant  is  ready  to  verify. 

And  for  a  further  plea  in  this  behalf,  the  defendant  says, 
that  said  alleged  invention  was  in  public  use  more  than  two 
years  before  said  Samuel  Sinclair  made  any  application  for 
letters  patent  thereon.  And  of  this  the  defendant  puts  itself 
upon  the  country. 

And  for  a  further  plea  in  this  behalf,  the  defendant  says, 
that  the  alleged  inoperativeness,  of  the  original  patent  men- 


PLEA   IN  BAB.  667 

tioned  in  said  declaration,  did  not  arise  from  inadvertence. 
And  of  this  the  defendant  puts  itself  upon  the  country. 

And  for  a  further  plea  in  this  behalf,  the  defendant  says, 
that  the  reissue  letters  patent  mentioned  in  said  declaration, 
are  not  for  the  same  invention  as  the  said  original  letters 
patent  upon  the  surrender  of  which  they  were  issued.  And 
of  this  the  defendant  puts  itself  upon  the  country. 

And  for  a  further  plea  in  this  behalf,  the  defendant  says,  that 
before  July  16,  1866,  letters  patent  of  the  Empire  of  France 
were  granted  on  said  apparatus,  to  said  Samuel  Sinclair,  for 
fourteen  years  from  August  1,  1865.  And  this  the  defend- 
ant is  ready  to  verify. 

And  for  a  further  plea  in  this  behalf,  the  defendant  says, 
that,  prior  to  January  1, 1869,  the  Eastern  Railroad  Company, 
and  the  Western  Railroad  Company,  were  separate  corpora- 
tions, created  and  existing  in  due  form  of  law,  in  the  States  of 
Rhode  Island  and  Connecticut,  respectively  ;  and  that  each 
had  theretofore  purchased,  and  then  possessed,  a  license  ex- 
ecuted by  said  Rufus  Russell,  authorizing  the  licensee  to  make 
any  convenient  number  of  specimens  of  said  apparatus,  and  to 
use  the  same  upon  the  railroad  of  the  licensee,  and  upon  the 
railroad  of  any  other  like  licensee,  throughout  the  term  of  said 
reissue  letters  patent ;  and  that  on  or  about  said  January  1, 
1869,  the  said  Eastern  Railroad  Company  and  the  said 
Western  Railroad  Company  were  lawfully  consolidated  into 
one  corporation,  to  wit  :  this  defendant ;  and  that  said  de- 
fendant thereafter  operated  the  said  railroads  of  its  said  con- 
stituent corporations,  and  operated  no  railroad  car  brakes,  nor 
any  specimen  of  the  said  apparatus,  elsewhere.  And  this  the 

defendant  is  ready  to  verify. 

RICHARD  RAT, 

Attorney  for  the  Defendant. 


FORMS  OF  PATENT  PLEADINGS. 

REPLICATION. 

CIRCUIT    COURT    OF   THE    UNITED    STATES, 
FOR  THE  DISTRICT  OF  CONNECTICUT. 


THOMAS  TKACY 


v. 


Case. 

THE   EASTERN  AND  WESTERN   RAILROAD 
COMPANY. 


Trespass  on  the 


And  the  said  plaintiff,  as  to  the  said  pleas  of  the  said  de- 
fendant by  it  above  pleaded,  of  which  it  has  pat  itself  upon 
the  country,  doth  the  like. 

And  the  plaintiff  as  to  the  said  plea  of  the  defendant,  by 
it  fourthly  above  pleaded,  says  that  the  said  Samuel  Sinclair 
did  not  actually  abandon  said  invention  before  making  any  ap- 
plication for  letters  patent  thereon.  And  of  this  the  plaintiff 
puts  himself  upon  the  country. 

And  the  plaintiff,  as  to  the  said  plea  of  the  defendant 
eighthly  above  pleaded,  says  that  no  letters  patent  of  the  Em- 
pire of  France  were  granted  to  said  Samuel  Sinclair  on  said 
apparatus,  before  the  granting  of  the  original  letters  patent 
mentioned  in  said  declaration.  And  of  this  the  plaintiff  puts 
himself  upon  the  country. 

And  the  plaintiff,  as  to  the  said  plea  of  the  defendant 
ninthly  above  pleaded,  says  that  the  licenses,  mentioned  in  said 
plea,  were  had  and  obtained  from  the  said  Rufus  Russell  by 
the  fraud  and  covin  of  the  said  alleged  licensees,  respectively. 
And  this  the  plaintiff  is  ready  to  verify. 

JOHN  JAY, 
Attorney  for  the  Plaintiff. 


REJOINDER. 


REJOINDER 

CIRCUIT    COURT    OF    THE    UNITED    STATES, 
FOR  THE  DISTRICT  OF  CONNECTICUT. 


THOMAS  TRACY 


v. 


THE  EASTERN   AND  WESTERN  RAILROAD 
COMPANY. 


on  the 
Case. 


And  the  said  defendant,  as  to  the  said  replication  of  the  said 
plaintiff,  to  the  said  fourth  and  eighth  pleas  of  the  said  de- 
fendant, and  of  which  he  hath  put  himself  upon  the  country, 
doth  the  like. 

And  the  defendant  as  to  the  replication  of  the  plaintiff  to 
the  said  ninth  plea  of  the  defendant,  says  that  neither  of  the 
licenses  mentioned  in  said  plea  was  obtained  from  said  Rufus 
Russell  by  the  fraud  or  covin  of  the  licensee  mentioned 
therein.  And  of  this  the  defendant  puts  itself  upon  the 

country. 

RICHARD  RAY, 

the  Defendant. 


670  FORMS  OF  PATENT  PLEADINGS. 

SUR-REJOINDER. 

CIRCUIT    COURT    OF    THE    UNITED    STATES, 
FOR  THE  DISTRICT  OF  CONNECTICUT. 


THOMAS  TRACY 

Trespass  on  the 

Case. 

THE  EASTERN   AND  WESTERN  RAILROAD 
COMPANY. 


And  the  said  plaintiff,  as  to  the  said  rejoinder  of  the  said 
defendant,  and  whereof  it  hath  put  itself  upon  the  country, 
doth  the  like. 

JOHN   JAY, 
Attorney  for  the  Plaintiff. 


BILL  OF  COMPLAINT. 

CIRCUIT    COURT    OF    THE    UNITED    STATES, 
FOR  THE  DISTRICT  OF  CONNECTICUT. 

To  the  Judges  of  the  Circuit  Court  of  the  United  States,  for 

the  District  of  Connecticut. 
IN  EQUITY. 

THOMAS  TRACY,  of  Hartford  Connecticut,  who  is  a  citizen 
of  the  State  of  Connecticut,  and  of  the  United  States,  brings 
this  his  bill  into  this  court,  against  The  Eastern  and  Western 
Railroad  Company,  which  is  a  corporation  created  and  exist- 
ing in  due  form  of  law  in  the  States  of  Connecticut  and 
Rhode  Island. 

And  thereupon  your  orator  complains  and  says,  on  informa- 
tion and  belief,  that  Samuel  Sinclair,  of  New  Haven  Con 


BILL   OF   COMPLAINT.  671 

necticut,  before  and  at  the  time  of  his  application  for  the 
hereinafter  mentioned  letters  patent,  was  a  citizen  of  the 
United  States,  and  was  the  true  original  and  first  inventor  of 
a  certain  new  and  useful  apparatus,  fully  described  in  the 
specification  of  the  letters  patent  hereinafter  mentioned,  and 
named  therein  an  •'  Improved  railroad  car- brake,''  and  which 
was  not  known  or  used  in  this  country,  and  not  patented  or 
described  in  any  printed  publication  in  this  or  in  any  foreign 
country,  before  his  invention  thereof  ;  and  was  not  in  public 
use  or  on  sale  more  than  two  years  prior  to  his  application  for 
letters  patent  of  the  United  States  therefor. 

And  your  orator  further  shows  unto  your  Honors,  on  infor- 
mation and  belief,  that  on  the  first  day  of  June,  1876,  and  be- 
fore the  issuing  of  the  hereinafter  mentioned  letters  patent, 
the  said  Samuel  Sinclair,  by  an  instrument  in  writing  duly 
executed  and  delivered  by  him,  and  bearing  date  on  the  last 
named  day,  did  assign  to  Rufus  Russell,  of  Meriden  Connect- 
icut, all  the  right,  title,  and  interest  whatever  in  said  inven- 
tion ;  and  that  said  instrument  in  writing  was  duly  recorded 
in  the  Patent  Office  on  the  tenth  day  of  June,  1876. 

And  your  orator  further  shows,  on  information  and  belief, 
that  on  the  sixteenth  day  of  July,  1876,  letters  patent  for  said 
invention,  in  due  form  of  law,  were,  on  the  application  of  said 
Samuel  Sinclair,  issued  and  delivered  to  said  Rufus  Russell,  in 
the  name  of  the  United  States  of  America,  and  under  the  seal 
of  the  Patent  Office  of  the  United  States,  and  were  signed  by 
the  Secretary  of  the  Interior  of  the  United  States,  and  coun- 
tersigned by  the  Commissioner  of  Patents  ;  and  that  the  said 
letters  patent  did  grant  to  the  said  Rufus  Russell,  his  heirs  or 
assigns,  for  the  term  of  seventeen  years,  the  exclusive  right  to 
make,  use,  and  vend  the  said  invention  throughout  the  United 
States,  and  the  Territories  thereof. 

And  your  orator  further  shows,  on  information  and  belief, 
that  said  letters  patent  were  inoperative  by  reason  of  an  insuffi- 
cient specification  ;  and  that  the  error  arose  from  inadvertence, 
and  without  any  fraudulent  or  deceptive  intention  ;  and  that 
the  said  Rufus  Russell  therefore  duly  surrendered  said  letters 
patent,  whereupon  the  Commissioner  of  Patents,  on  the 


672  FORMS  OF  PATENT  PLEADINGS. 

fifteenth  day  of  October,  1876,  caused  new  letters  patent  for 
the  same  invention  to  be  issued  to  the  said  Rufus  Russell,. for 
the  unexpired  part  of  the  term  of  said  original  letters  patent ; 
and  your  orator  makes  profert  of  said  reissue  letters  patent. 

Arid  your  orator  further  shows,  on  information  and  belief, 
that  through  mistake,  and  without  any  fraudulent  or  deceptive 
intention,  the  said  Samuel  Sinclair,  in  his  application  for  said 
original  letters  patent,  claimed  to  be  the  true  original  and  first 
inventor  of  a  certain  part  of  the  said  apparatus  of  which  he 
was  not  the  first  inventor,  and  which  claim  was  repeated  in 
said  reissue  letters  patent  and  numbered  "  2  "  therein  ;  and 
that  the  said  Rufus  Russell,  without  unreasonable  delay, 
entered  in  the  Patent  Office,  before  the  commencement  of  this 
suit,  a  disclaimer  in  writing  of  the  said  part  covered  by  the 
said  second  claim  of  said  reissue  letters  patent. 

And  your  orator  further  shows,  that  the  said  Rufus  Russell, 
on  the  sixteenth  day  of  September,  1878,  by  a  certain  instru- 
ment in  writing,  duly  executed  and  delivered  by  him,  and 
bearing  date  on  said  last  mentioned  day,  did  grant  to  your 
orator  the  entire  right,  title,  and  interest,  in  and  to  the  then 
unexpired  portion  of  the  term  of  said  reissue  letters  patent,  in 
and  throughout  the  States  of  Connecticut  and  Rhode  Island  ; 
and  that  said  instrument  in  writing  was  recorded  in  the  Patent 
Office  on  the  thirty-first  day  of  October,  1878. 

And  your  orator  further  shows,  on  information  and  belief, 
that  the  said  defendant,  on  and  after  the  first  day  of  January 
1879,  and  up  to  the  time  of  the  commencement  of  this  action, 
and  during  and  within  the  term  of  seventeen  years  mentioned 
in  said  letters  patent,  and  after  the  granting  of  said  reissue 
letters  patent,  and  within  those  parts  of  the  United  States 
covered  by  the  said  grant  to  your  orator,  unlawfully,  wrong- 
fully, and  injuriously,  and  with  intent  to  derive  profits  from 
making  and  using  said  apparatus,  and  to  deprive  your  orator 
of  the  royalties  which  he  might  and  otherwise  would  have  de- 
rived from  the  sale  of  rights  to  make  and  use  specimens 
thereof,  and  without  the  license  of  your  orator,  or  of  the  said 
Rufus  Russell,  and  against  the  will  of  your  orator,  did  make 
and  did  use,  and  did  cause  to  be  made,  and  did  cause  to  be 
used,  sundry  specimens  of  said  apparatus,  and  of  machines 


BILL   OF   COMPLAINT.  673 

which  contained  and  employed  substantially  the  invention  cov- 
ered by  said  reissue  letters  patent  after  said  disclaimer,  in 
infringement  of  the  said  exclusive  rights  secured  to  the  said 
Ruf  us  Russell  by  the  letters  patent  aforesaid,  and  granted  by 
him  to  your  orator  as  hereinbefore  set  forth  ;  but  how  many 
such  specimens  the  defendant  so  made  and  used,  or  caused  to 
be  made  and  used,  your  orator  is  ignorant,  and  cannot  set 
forth  ;  but  your  orator  avers,  on  information  and  belief,  that 
the  defendant  so  made  and  used,  and  caused  to  be  made  and 
used,  a  large  number  thereof,  and  that  it  derived  large  profits 
therefrom,  but  to  what  amount  your  orator  is  ignorant  and 
cannot  set  forth,  and  that  your  orator  has  been  deprived  of 
large  royalties  by  reason  of  the  aforesaid  infringement  of  the 
defendant,  and  has  thus  incurred  large  damages  thereby. 

And  your  orator  further  shows,  that  he  fears  and  has  reason 
to  fear,  that  unless  the  defendant  is  restrained  by  a  writ  of 
injunction  issuing  out  of  this  Court,  it  will  continue  to  make 
and  to  use  numbers  of  specimens  of  said  apparatus,  and  there- 
by will  cause  irreparable  injury  to  your  orator's  aforesaid  ex- 
clusive rights. 

And  your  orator  further  shows,  that  the  validity  of  the  said 
reissue  letters  patent,  has  heretofore  been  uniformly  affirmed, 
after  strenuous  litigation,  by  verdicts  and  judgments  at  law, 
and  by  final  decrees  in  equity,  in  several  of  the  Circuit  Courts 
of  the  United  States  ;  and  that  the  railroad  companies  of  the 
United  States  have  long  generally  acquiesced  in  that  validity. 

And  your  orator  prays  your  Honors  to  grant  unto  your 
orator  a  preliminary,  and  also  a  permanent  writ  of  injunction, 
issuing  out  of  and  under  the  seal  of  this  honorable  Court, 
directed  to  the  said  Eastern  and  Western  Railroad  Company, 
and  strictly  enjoining  it  and  its  officers,  agents,  and  employes, 
not  to  make,  or  use,  or  sell,  nor  cause  to  be  made,  or  used,  or 
sold,  any  railroad  car  or  other  machine  or  apparatus  containing 
or  employing  the  invention  covered  and  secured  by  said  reissue 
letters  patent. 

And  your  orator  further  prays,  that  the  defendant,  by  a  de- 
cree of  this  Court,  may  be  compelled  to  account  for,  and  pay 
over  to  your  orator,  all  the  profits  which  the  defendant  has 
derived  or  shall  have  derived  from  any  making  and  using,  or 


674:  FORMS  OF  PATENT  PLEADINGS. 

from  any  using  of  any  specimen  of  the  apparatus  covered 
and  secured  by  said  reissue  letters  patent  ;  and  also  that  the 
defendant  be  decreed  to  pay  all  the  damages  which  your  orator 
has  incurred,  or  shall  have  incurred,  on  account  of  the  de- 
fendant's infringement  of  said  reissue  letters  patent  ;  and  also 
that  the  defendant  be  decreed  to  pay  the  costs  of  this  suit  ; 
and  that  your  orator  may  have  such  further  and  other  relief, 
as  the  equity  of  the  case,  or  the  statutes  of  the  United  States, 
may  require,  and  to  this  Court  may  seern  just. 

To  the  end,  therefore,  that  the  defendant  may,  if  it  can, 
show  why  your  orator  should  not  have  the  relief  hereby  pray- 
ed, and  may,  under  the  oath  of  its  proper  officers,  and  accord- 
ing to  the  best  and  utmost  of  their  knowledge,  remembrance, 
information  or  belief,  full,  true,  direct,  and  perfect  answer 
make  to  such  of  the  several  interrogatories  hereinafter  num- 
bered and  set  forth,  as  by  the  note  hereunder  written,  it  is 
required  to  answer  ;  that  is  to  say  : 

1.  Whether,  after  the  first  day  of  January,  eighteen  hun- 
dred and  seventy-nine,  it  made  or  used,  or  caused  to  be  made 
or  used,  anywhere  in  Rhode  Island  or  Connecticut,  any  speci- 
men of  any  apparatus  substantially  like  the  invention  covered 
and  secured  by  the  said  reissue  letters  patent  ;  and  if  so,  how 
many  such  specimens  it  so  made,  and  how  many  it  so  used, 
and  how  long  it  used  the  same  : 

May  it  please  your  Honors  to  grant  unto  your  orator  a  writ 
of  subpoena  ad  respondendum,  issuing  out  of  and  under  the 
seal  of  this  Honorable  Court,  and  directed  to  the  said  The 
Eastern  and  "Western  Railroad  Company,  and  commanding  it 
to  appear  and  make  answer  to  this  bill  of  complaint,  and  to 
perform  and  abide  by  such  order  and  decree  herein  as  to  this 
Court  shall  seem  just. 

And  your  orator  will  ever  pray. 

THOMAS   TKACY, 

Complainant. 
JOHN   JAY, 
Solicitor  for  the  Complainant. 

LTJTHEK  LEAKNED, 

Of  Counsel. 


PLEA   IN    EQUITY. 

The  defendant,  The  Eastern  and  Western  Railroad  Com- 
pany,  is  required  to  answer  the  interrogatory  numbered  1. 

JOHN   JAY, 
Solicitor  for  the  Complainant. 

STATE  OF  CONNECTICUT,  COUNTY  OF  HARTFORD,  88. 

On  this  twenty-sixth  day  of  June,  1883,  before  me  per- 
sonally appeared  Thomas  Tracy,  and  made  oath  that  he  has 
read  the  foregoing  bill,  subscribed  by  him,  and  knows  the  con- 
tents thereof,  and  that  the  same  is  true  of  his  own  knowledge, 
except  as  to  matters  which  are  therein  stated  to  be  based  on 
information  and  belief,  and  that  as  to  those  matters  he  believes 
it  to  be  true. 

'~*-~  .    ABTHUB   ANSON. 

i\ 
L>  B    (  Notary  Public. 


PLEA  IN   EQUITY. 

CIRCUIT    COURT    OF    THE    UNITED    STATES, 
FOR    THE    DISTRICT    OF    CONNECTICUT. 


THOMAS  TRACT 

In  Equity. 

THE  EASTERN  AND  WESTERN   RAILROAD 
COMPANY. 


The  plea  of  The  Eastern  and  Western  Railroad  Company, 
defendant,  to  the  bill  of  complaint  of  Thomas  Tracy,  com- 
plainant. 

This  defendant,  by  protestation,  not  confessing  or  acknowl- 
edging the  matters  and  things  in  and  by  said  bill  set  forth  and 


676  FOEM8  OF  PATENT  PLEADINGS. 

alleged  to  be  true,  in  such  manner  and  form  as  the  same  are 
thereby  and  therein  set  forth  and  alleged  ;  for  plea  to  the 
whole  of  said  bill,  says  that,  prior  to  January  1,  1879,  the 
Eastern  Railroad  Company  and  the  "Western  Railroad  Com- 
pany were  separate  corporations,  created  and  existing  in  due 
form  of  law  in  the  States  of  Rhode  Island  and  Connecticut, 
respectively  ;  and  that  each  had  theretofore  purchased,  and 
then  possessed,  a  license  executed  by  said  Rufus  Russell,  au- 
thorizing the  licensee  to  make  any  convenient  number  of  spec- 
imens of  said  apparatus,  and  to  use  the  same  upon  the  rail- 
road of  the  licensee,  and  the  railroad  of  any  other  like  licensee, 
throughout  the  term  of  said  reissue  letters  patent  ;  and  that 
on  or  about  the  said  January  1,  1879,  the  said  Eastern  Rail- 
road Company,  and  the  said  "Western  Railroad  Company,  were 
lawfully  consolidated  into  one  corporation,  to  wit :  this  de- 
fendant ;  and  that  this  defendant  thereafter  operated  the  said 
railroads  of  its  said  constituent  corporations,  and  operated  no 
railroad  car-brakes,  nor  any  specimen  of  the  said  apparatus, 
elsewhere. 

All  which  statements  this  defendant  doth  aver  to  be  true, 
and  it  pleads  the  said  licenses  to  the  said  complainant's  bill, 
and  prays  the  judgment  of  this  Honorable  Court,  whether  it 
should  be  compelled  to  make  any  other  or  further  answer  to 
the  said  bill,  and  prays  to  be  hence  dismissed  with  its  costs  in 
this  behalf  sustained. 

In  witness  whereof,  the  said  defendant,  The  Eastern  and 
"Western  Railroad  Company,  has  hereunto  affixed  its  corporate 
seal,  and  caused  the  same  to  be  attested  by  Charles  Clark,  its 
secretary, 

CHAKLES    CLARK, 

Secretary. 

RICHAKD   RAY, 
Solicitor  and  Counsel  for  the  Defendant. 

I  hereby  certify  that  in  my  opinion  the  foregoing  plea  is 
well  founded  in  point  of  law. 

RICHARD  RAT, 
Solicitor  and  Counsel  for  the  Defendant. 


ANSWER. 


STATE  OF  CONNECTICUT,  COUNTY  OF  HARTFORD,  M. 

On  this  third  day  of  September,  1883,  before  me  per- 
sonally  appeared  Charles  Clark,  and  made  oath  that  he  has 
read  the  above  plea,  and  knows  the  contents  thereof,  and  that 
it  is  not  interposed  for  delay,  and  that  it  is  true  in  point  of 
fact. 

,  —  '  —  ,  ARTHUR   ANSON, 

•j  L.  8.    j  Notary  Public. 


ANSWER. 

CIRCUIT    COURT    OF    THE    UNITED    STATES, 
FOR    THE    DISTRICT    OF    CONNECTICUT. 


THOMAS  TRACY 

v. 

In  Equity. 

THE   EASTERN  AND  WESTERN    RAILROAD 
COMPANY. 


The  defendant,  for  answer  to  the  bill  of  complaint  of  the 
complainant,  answering,  says  : 

The  defendant  admits,  that  it  is  a  corporation  created  and 
existing  in  due  form  of  law  in  the  States  of  Connecticut  and 
Rhode  Island. 

The  defendant  denies,  on  information  and  belief,  that 
Samuel  Sinclair  was  the  true,  original,  and  first  inventor  of 
the  apparatus  covered  by  the  original  letters  patent  mentioned 
in  said  bill ;  and  the  defendant  says,  on  information  and  be- 
lief, that  said  apparatus  was  not  an  invention  when  produced 
by  said  Samuel  Sinclair  ;  and  that  it  was  not  novel  at  that 
time,  and  that  an  apparatus  substantially  identical  with  it  in 


678  FORMS  OF  PATENT  PLEADINGS. 

character  was  previously  patented  in  letters  patent  of  the 
United  States,  granted  to  Mason  Montgomery,  May  16,  1856  ; 
and  that  another  like  apparatus  was  previously  described  on 
page  777  of  a  certain  printed  book  entitled  "  The  Practical 
Railroad  Carriage  Builder,"  published  in  London,  England, 
in  the  year  1858,  by  "William  Wright,  of  Paternoster  Kow  ; 
and  that  still  another  like  apparatus  was  previously  known 
and  used  by  Nathan  Norris,  of  Rochester  New  York,  on  the 
New  York  Central  Eailroad,  in  said  Rochester,  and  elsewhere 
on  said  railroad,  in  the  State  of  New  York,  in  the  year  1859. 

And  the  defendant  further  says,  on  information  and  belief, 
that  said  Samuel  Sinclair  actually  abandoned  his  said  alleged 
invention,  before  he  made  any  application  for  letters  patent 
therefor. 

And  the  defendant  further  says,  on  information  and  belief, 
that  the  said  alleged  invention  was  in  public  use  more  than 
two  years  before  said  Samuel  Sinclair  made  any  application 
for  letters  patent  thereon. 

And  the  defendant  further  says,  that  it  has  no  knowledge 
whether  the  said  Samuel  Sinclair  ever  executed  and  delivered 
any  instrument  of  assignment  to  Rufus  Russell,  purporting  to 
convey  the  entire  right,  title,  and  interest  in  said  alleged  in- 
vention. 

And  the  defendant  further  says,  that  it  has  no  knowledge 
whether  any  original  letters  patent  for  said  alleged  invention, 
were  ever  issued  and  delivered  to  said  Rufus  Russell. 

And  the  defendant  denies,  on  information  and  belief,  that 
any  such  letters  patent  were  inoperative  by  reason  of  an  in- 
sufficient specification  ;  and  that  any  such  inoperativeness 
arose  from  inadvertence,  and  without  fraudulent  or  deceptive 
intention. 

The  defendant  further  says,  that  it  has  no  knowledge 
whether  said  Rufus  Russell  ever  surrendered  any  such  letters 
patent,  or  whether  the  Commissioner  of  Patents  ever  caused 
any  reissue  letters  patent  to  be  issued  to  said  Russell  for  the 
unexpired  part  of  the  term  of  any  such  original  letters  patent. 

And  the  defendant  further  says,  on  information  and  belief, 
that  the  alleged  reissue  letters  patent  mentioned  in  the  com- 


ANSWER.  079 

plainant's  bill,  are  not  for  the  same  invention  as  the  alleged 
original  letters  patent  upon  the  surrender  of  which  the?  are 
alleged  in  said  bill  to  have  been  issued. 

And  the  defendant  further  says,  that  it  has  no  knowledge 
whether,  through  mistake,  and  without  any  fraudulent  inten- 
tion, the  said  Samuel  Sinclair,  in  his  application  for  said 
alleged  original  letters  patent,  claimed  to  be  the  true,  original, 
and  first  inventor  of  a  certain  part  of  the  said  apparatus  of 
which  he  was  not  the  first  inventor  ;  or  whether  the  said 
Rufus  Russell,  without  unreasonable  delay,  entered  in  the 
Patent  Office,  before  the  commencement  of  this  suit,  a  dis- 
claimer in  writing  of  any  such  part. 

And  the  defendant  further  says,  that  it  has  no  knowledge 
whether  the  said  Rufus  Russell  ever  executed  and  delivered 
any  instrument  of  grant  to  the  complainant,  purporting  to 
convey  the  entire  right,  title,  and  interest  in  and  to  the  then 
unexpired  portion  of  the  term  of  said  alleged  reissue  letters 
patent,  in  and  throughout  the  States  of  Connecticut  and 
Rhode  Island. 

And  the  defendant  further  says,  on  information  and  belief, 
that  before  July  16,  1876,  letters  patent  of  the  empire  of 
France  were  granted,  on  said  apparatus,  to  said  Samuel  Sin- 
clair, for  fourteen  years  from  August  1,  1869. 

And  the  defendant  denies,  on  information  and  belief,  that 
it  ever  made  or  used,  or  caused  to  be  made  or  used,  any  speci- 
men of  any  apparatus  covered  by  said  reissue  letters  patent ; 
and  likewise  denies  that  it  ever  derived  any  profit  from  any 
such  making  or  using  ;  and  likewise  denies  that  the  defendant 
ever  incurred  any  damage  on  account  of  any  such  transactions 
committed  or  caused  to  be  committed  by  the  defendant. 

The  defendant  further  says,  that  it  has  no  knowledge 
whether  the  validity  of  any  such  alleged  reissue  patent  has 
heretofore  been  uniformly  affirmed,  after  strenuous  litigation, 
by  verdicts  or  judgments  at  law,  or  by  final  decrees  in  equity, 
in  several  of  the  Circuit  Courts  of  the  United  States  ;  but  the 
defendant  denies,  on  information  and  belief,  that  any  such 
validity  has  been  generally  acquiesced  in  by  the  railroad  com- 
panies of  the  United  States. 


680  FOKMS  OF  PATENT  PLEADINGS. 

All  of  which  statements  and  defences  this  defendant  is  ready 
to  aver,  maintain,  and  prove,  as  this  Honorable  Court  shall 
direct ;  and  it  prays  hence  to  be  dismissed  with  its  costs  in  this 
behalf  sustained. 

In  witness  whereof,  the  said  defendant,  The  Eastern  and 
Western  Railroad  Company,  has  hereunto  affixed  its  corporate 
seal,  and  caused  the  same  to  be  attested  by  Charles  Clark,  its 
Secretary. 

CHARLES    CLARK, 

Secretary. 

RICHARD   RAY, 
Solicitor  and  Counsel  for  the  Defendant. 

STATE  OF  CONNECTICUT,  COUNTY  OF  HARTFORD,  ss. 

On  this  first  day  of  October,  1883,  before  me  personally 
appeared  Charles  Clark,  and  made  oath  that  he  has  read  the 
foregoing  answer,  and  knows  the  contents  thereof  ;  and  that 
the  same  is  true  of  his  own  knowledge,  except  as  to  the  mat- 
ters which  are  therein  admitted  or  stated  to  be  based  on  in- 
formation and  belief,  and  as  to  those  matters  he  believes  it  to 
be  true. 

'—•*-—  ARTHUR   ANSON, 

!\ 
L  g<   L  utfotary  Public. 


REPLICATION    IN   EQUITY. 


KEPLICATION  IN  EQUITY. 

CIRCUIT    COURT    OP    THE    UNITED    STATES, 
FOR    THE    DISTRICT    OF    CONNECTICUT. 


THOMAS  TRACY 


v. 


THE   EASTERN  AND  WESTERN   RAILROAD 
COMPANY. 


In  Equity. 


This  repliant,  saving  and  reserving  unto  himself  all  and 
all  manner  of  advantage  of  exception  to  the  manifold  insuffi- 
ciencies of  the  said  answer,  for  replication  thereunto  saith,  that 
he  will  aver  and  prove  his  said  bill  to  be  true,  certain,  and 
sufficient  in  the  law  to  be  answered  unto  ;  and  that  the  Mod 
answer  of  the  said  defendant  is  uncertain,  untrue,  and  insuffi- 
cient to  be  replied  unto  by  this  repliant  ;  without  this,  that 
any  other  matter  or  thing  whatsoever  in  the  said  answer  con- 
tained, material  or  effectual  in  the  law  to  be  replied  unto,  con- 
fessed and  avoided,  traversed  or  denied,  is  true  ;  all  which 
matters  and  things  this  repliant  is,  and  will  be,  ready  to  aver 
and  prove,  as  this  Honorable  Court  shall  direct  ;  and  humbly 
prays,  as  in  and  by  his  said  bill  he  hath  already  prayed. 

JOHN  JAY, 
Solicitor  for  the  Complainant. 


RULES  OF  PRACTICE 

FOR  THE 

COURTS   OF   EQUITY   OF  THE  UNITED    STATES. 
IN  FORCE  APRIL  30,  1889. 


PRELIMINARY  REGULATIONS. 

RULE  1. 

THE  circuit  courts,  as  courts  of  equity,  shall  be  deemed 
always  open  for  the  purpose  of  filing  bills,  answers,  and  other 
pleadings,  for  issuing  and  returning  mesne  and  final  process 
and  commissions,  and  for  making  and  directing  all  interlocu- 
tory motions,  orders,  rules,  and  other  proceedings,  preparatory 
to  the  hearing  of  all  causes  upon  their  merits. 

RULE  2. 

The  clerk's  office  shall  be  open,  and  the  clerk  shall  be  in 
attendance  therein,  on  the  first  Monday  of  every  month,  for 
the  purpose  of  receiving,  entering,  entertaining,  and  disposing 
of  all  motions,  rules,  orders,  and  other  proceedings,  which  are 
grantable  of  course,  and  applied  for,  or  had  by  the  parties,  or 
their  solicitors,  in  all  causes  pending  in  equity,  in  pursuance 
of  the  rules  hereby  prescribed. 

RULE  3. 

Any  judge  of  the  circuit  court,  as  well  in  vacation  as  in 
term,  may,  at  chambers,  or  on  the  rule-days  at  the  clerk's 
office,  make  and  direct  all  such  interlocutory  orders,  rules,  and 


EQUITY    RULES.  683 

other  proceedings,  preparatory  to  the  hearing  of  all  causes 
upon  their  merits,  in  the  same  'manner  and  with  the  same 
effect  as  the  circuit  court  could  make  and  direct  the  same  in 
term,  reasonable  notice  of  the  application  therefor  being  first 
given  to  the  adverse  party,  or  his  solicitor,  to  appear  and  show 
cause  to  the  contrary  at  the  next  rule-day  thereafter,  unless 
some  other  time  is  assigned  by  the  judge  for  the  hearing. 

RULE  4. 

All  motions,  rules,  orders,  and  other  proceedings  made  and 
directed  at  chambers,  or  on  rule-days  at  the  clerk's  office, 
whether  special  or  of  course,  shall  be  entered  by  the  clerk  in 
an  order-book,  to  be  kept  at  the  clerk's  office,  on  the  day 
when  they  .are  made  and  directed  ;  which  book  shall  be  open 
at  all  office  hoflrs  to  the  free  inspection  of  the  parties  in  any 
suit  in  equity,  and  their  solicitors.  And,  except  in  cases 
where  personal  or  other  notice  is  specially  required  or  directed, 
such  entry  in  the  order-book  shall  be  deemed  sufficient  notice 
to  the  parties  and  their  solicitors,  without  further  service 
thereof,  of  all  orders,  rules,  acts,  notices,  and  other  proceed- 
ings entered  in  such  order-book,  touching  any  and  all  the 
matters  in  the  suits  to  and  in  which  they  are  parties  and  solic- 
itors. And  notice  to  the  solicitors  shall  be  deemed  notice  to 
the  parties  for  whom  they  appear  and  whom  they  represent, 
in  all  cases  where  personal  notice  on  the  parties  is  not  other- 
wise specially  required.  Where  the  solicitors  for  all  the 
parties  in  a  suit  reside  in  or  near  the  same  town  or  city,  the 
judges  of  the  circuit  court  may,  by  rule,  abridge  the  time  for 
notice  of  rules,  orders,  or  other  proceedings  not  requiring  per- 
sonal service  on  the  parties,  in  their  discretion. 

RULE  5. 

All  motions  and  applications  in  the  clerk's  office  for  the 
issuing  of  mesne  process  and  final  process  to  enforce  and  ex- 
ecute decrees,  for  filing  bills,  answers,  pleas,  demurrers,  and 
other  pleadings  ;  for  making  amendments  to  bills  and  answers  ; 
for  taking  bills  pro  confess;  for  filing  exceptions,  and  for 
other  proceedings  in  the  clerk's  office  which  do  not,  by  the 


684  EQUITY    RULES. 

rules  hereinafter  prescribed,  require  any  allowance  or  order  of 
the  court,  or  of  any  judge  thereof,  shall  be  deemed  motions 
and  applications,  grantable  of  course  by  the  clerk  of  the  court. 
But  the  same  may  be  suspended,  or  altered,  or  rescinded  by 
any  judge  of  the  court,  upon  special  cause  shown. 

RULE  6. 

All  motions  for  rules  or  orders  and  other  proceedings,  which 
are  not  grantable  of  course,  or  without  notice,  shall,  unless  a 
different  time  be  assigned  by  a  judge  of  the  court,  be  made  on 
a  rule- day,  and  entered  in  the  order-book,  and  shall  be  heard 
at  the  rule-day  next  after  that  on  which  the  motion  is  made. 
And  if  the  adverse  party,  or  his  solicitor,  shall  not  then  ap- 
pear, or  shall  not  show  good  cause  against  the  same,  the  motion 
may  be  heard  by  any  judge  of  the  court  ex  parte,  and  granted, 
as  if  not  objected  to,  or  refused,  in  his  discretion. 

Process. 

RULE  7. 

The  process  of  subpoena  shall  constitute  the  proper  mjsne 
process  in  all  suits  in  equity,  in  the  first  instance,  to  require 
the  defendant  to  appear  and  answer  the  exigency  of  the  bill ; 
and,  unless  otherwise  provided  in  these  rules,  or  specially  or- 
dered by  the  circuit  court,  a  writ  of  attachment,  and  if  the  de- 
fendant cannot  be  found,  a  writ  of  sequestration,  or  a  writ  of 
assistance  to  enforce  a  delivery  of  possession,  as  the  case  may 
require,  shall  be  the  proper  process  to  issue  for  the  purpose  of 
compelling  obedience  to  any  interlocutory  or  final  order  or 
decree  of  the  court. 

RULE  8. 

Final  process  to  execute  any  decree  may,  if  the  decree  be 
solely  for  the  payment  of  money,  be  by  a  writ  of  execution, 
in  the  form  used  in  the  circuit  court  in  suits  at  common  law 
in  actions  of  assumpsit.  If  the  decree  be  for  the  performance 
of  any  specific  act,  as,  for  example,  for  the  execution  of  a 
conveyance  of  land  or  the  delivering  up  of  deeds,  or  other 


EQUITY   RULES.  685 

documents,  the  decree  shall,  in  all  cases,  prescribe  the  time 
within  which  the  act  shall  be  done,  of  which  the  defendant 
shall  be  bound  without  further  service  to  take  notice  ;  and 
upon  affidavit  of  the  plaintiff,  filed  in  the  clerk's  office,  that 
the  same  has  not  been  complied  with  within  the  prescribed 
time,  the  clerk  shall  issue  a  writ  of  attachment  against  the  de- 
linquent party,  from  which,  if  attached  thereon,  he  shall  not 
be  discharged,  unless  upon  a  full  compliance  with  the  decree 
and  the  payment  of  all  costs,  or  upon  a  special  order  of  the 
court  or  of  a  judge  thereof,  upon  motion  and  affidavit,  enlarg- 
ing the  time  for  the  performance  thereof.  If  the  delinquent 
party  cannot  be  found,  a  writ  of  sequestration  shall  issue 
against  his  estate  upon  the  return  of  non  est  inventus,  to  com- 
pel obedience  to  the  decree. 

RULE  9. 

When  any  decree  or  order  is  for  the  delivery  of  possession 
upon  proof  made  by  affidavit  of  a  demand  and  refusal  to  obey 
the  decree  or  order,  the  party  prosecuting  the  same  shall  be 
entitled  to  a  writ  of  assistance  from  the  clerk  of  the  court. 

RULE  10. 

Every  person,  not  being  a  party  in  any  cause,  who  has  ob- 
tained an  order,  or  in  whose  favor  an  order  shall  have  been 
made,  shall  be  enabled  to  enforce  obedience  to  such  order  by 
the  same  process  as  if  he  were  a  party  to  the  cause  ;  and  every 
person,  not  being  a  party  in  any  cause,  against  whom  obedience 
to  any  order  of  the  court  may  be  enforced,  shall  be  liable  to  the 
same  process  for  enforcing  obedience  to  such  order  as  if  he 
were  a  party  in  the  cause. 

Service   of  Process. 

RULE  11. 

No  process  of  subpoena  shall  issue  from  the  clerk's  office  in 
any  suit  in  equity  until  the  bill  is  filed  in  the  office. 


EQUITY   RULES. 


RULE  12. 

Whenever  a  bill  is  filed  the  clerk  shall  issue  the  process  of 
subpoena  thereon,  as  of  course,  upon  the  application  of  the 
plaintiff,  which  shall  be  returnable  into  the  clerk's  office  the 
next  rule-day,  or  the  next  rule-day  but  one,  at  the  election  of 
the  plaintiff,  occurring  after  twenty  days  from  the  time  of  the 
issuing  thereof.  At  the  bottom  of  the  subpoena  shall  be 
placed  a  memorandum,  that  the  defendant  is  to  enter  his  ap- 
pearance in  the  suit  in  the  clerk's  office  on  or  before  the  day 
at  which  the  writ  is  returnable  ;  otherwise,  the  bill  may  be 
taken  pro  confesso.  Where  there  are  more  than  one  defendant, 
a  writ  of  subposna  may,  at  the  election  of  the  plaintiff,  be  sued 
out  separately  for  each  defendant,  except  in  the  case  of  husband 
and  wife  defendants,  or  a  joint  subpoena  against  all  the  de- 
fendants. 

RULE  13. 

The  service  of  all  subpoenas  shall  be  by  a  delivery  of  a  copy 
thereof,  by  the  officer  serving  the  same,  to  the  defendant  per- 
sonally, or  by  leaving  a  copy  thereof  at  the  dwelling-house  or 
usual  place  of  abode  of  each  defendant,  with  some  adult  person 
who  is  a  member  or  resident  in  the  family. 

RULE  14. 

Whenever  any  subpoena  shall  be  returned  not  executed  as  to 
any  defendant,  the  plaintiff  shall  be  entitled  to  another  sub- 
poena, toties  quoties,  against  such  defendant,  if  he  shall  require 
it,  until  due  service  is  made. 

RULE  15. 

The  service  of  all  process,  mesne  and  final,  shall  be  by  the 
marshal  of  the  district,  or  his  deputy,  or  by  some  other  person 
specially  appointed  by  the  court  for  that  purpose,  and  not 
otherwise.  In  the  latter  case,  the  person  serving  the  process 
shall  make  affidavit  thereof. 


EQUITY  RULES.  687 

RULE  16. 

Upon  the  return  of  the  subpoena  as  served  and  executed  upon 
any  defendant,  the  clerk  shall  enter  the  suit  upon  his  docket 
as  pending  in  the  court,  and  shall  state  the  time  of  the  entry. 

Appearance. 

RULE  17. 

The  appearance-day  of  the  defendant  shall  be  the  rule-day 
to  which  the  subpoena  is  made  returnable,  provided  he  has  been 
served  with  the  process  twenty  days  before  that  day  ;  otherwise, 
his  appearance-day  shall  be  the  next  rule-day  succeeding  the 
rule-day  when  the  process  is  returnable.  The  appearance  of 
the  defendant,  either  personally  or  by  his  solicitor,  shall  be 
entered  in  the  order-book  on  the  day  thereof  by  the  clerk. 

Bills  Taken  Pro  Confesso. 

RULE  18. 

It  shall  be  the  duty  of  the  defendant,  unless  the  time  shall 
be  otherwise  enlarged,  for  cause  shown,  by  a  judge  of  the 
court,  upon  motion  for  that  purpose,  to  file  his  plea,  demurrer, 
or  answer  to  the  bill,  in  the  clerk's  office,  on  the  rule-day  next 
succeeding  that  of  entering  his  appearance.  In  default  thereof, 
the  plaintiff  may,  at  his  election,  enter  an  order  (as  of  course) 
in  the  order-book,  that  the  bill  be  taken  pro  confesso  j 
and  thereupon  the  cause  shall  be  proceeded  in  exparte,  and  the 
matter  of  the  bill  may  be  decreed  by  the  court  at  any  time 
after  the  expiration  of  thirty  days  from  and  after  the  entry 
of  said  order,  if  the  same  can  be  done  without  an  answer,  and 
is  proper  to  be  decreed  ;  or  the  plaintiff,  if  lie  requires  any 
discovery  or  answer  to  enable  him  to  obtain  a  proper  decree, 
shall  be  entitled  to  process  of  attachment  against  the  defendant, 
to  compel  an  answer,  and  the  defendant  shall  not,  when  arrest- 
ed upon  such  process,  be  discharged  therefrom,  unless  upon 
filing  his  answer,  or  otherwise  complying  with  such  order  as 
the  court  or  a  judge  thereof  may  direct,  as  to  pleading  to  or 


688  EQUITY    RULES. 

fully  answering  the  bill,  within  a  period  to  be  fixed  by  the 
court  or  judge,  and  undertaking  to  speed  the  cause. 

KTJLE  19. 

When  the  bill  is  taken  pro  confesso,  the  court  may  proceed 
to  a  decree  at  any  time  after  the  expiration  of  thirty  days  from 
and  after  the  entry  of  the  order  to  take  the  bill  pro  confesso, 
and  such  decree  rendered  shall  be  deemed  absolute,  unless  the 
court  shall,  at  the  same  term,  set  aside  the  same,  or  enlarge 
the  time  for  filing  the  answer,  upon  cause  shown  upon  motion 
and  affidavit  of  the  defendant.  And  no  such  motion  shall  be 
granted,  unless  upon  the  payment  of  the  costs  of  the  plaintiff 
in  the  suit  up  to  that  time,  or  such  part  thereof  as  the  court 
shall  deem  reasonable,  and  unless  the  defendant  shall  undertake 
to  file  his  answer  within  such  time  as  the  court  shall  direct, 
and  submit  to  such  other  terms  as  the  court  shall  direct,  for 
the  purpose  of  speeding  the  cause. 

Frame   of  Bills. 

RULE  20. 

Every  bill,  in  the  introductory  part  thereof,  shall  contain  the 
names,  places  of  abode,  and  citizenship  of  all  the  parties,  plain- 
tiffs and  defendants,  by  and  against  whom  the  bill  is  brought. 
The  form,  in  substance,  shall  be  as  follows  :  "To  the  judges 
of  the  circuit  court  of  the  United  States  for  the  district 

of :  A.   B. ,  of ,  and  a  citizen  of  the  State  of 

,  brings  this  his  bill  against  C.  D. ,  of ,  and  a  citizen 

of  the  State  of ,  and  E.  F.,  of  — - — ,  and  a  citizen 

of   the  State   of  -       — .     And  thereupon  your  orator  com- 
plains  and  says,  that,"  &c. 

RULE  21. 

The  plaintiff,  in  his  bill,  shall  be  at  liberty  to  omit,  at  his 
option,  the  part  which  is  usually  called  the  common  con- 
federacy clause  of  the  bill,  averring  a  confederacy  between  the 
defendants  to  injure  or  defraud  the  plaintiff  ;  also  what  is 
commonly  called  the  charging  part  of  the  bill,  setting  forth 


EQUITY    RULES. 

the  matters  or  excuses  which  the  defendant  is  supposed  to  in- 
tend to  set  up  by  way  of  defence  to  the  bill ;  also  what  is  com- 
monly called  the  jurisdiction  clause  of  the  bill,  that  the  acts 
complained  of  are  contrary  to  equity,  and  the  defendant 
is  without  any  remedy  at  law  ;  and  the  bill  shall  not  be 
demurrable  therefor.  And  the  plaintiff  may,  in  the  narrative 
or  stating  part  of  his  bill,  state  and  avoid,  by  counter-averments, 
at  his  option,  any  matter  or  thing  which  he  supposes  will  be 
insisted  upon  by  the  defendant,  by  way  of  defence  or  excuse, 
to  the  case  made  by  the  plaintiff  for  relief.  The  prayer  of  the 
bill  shall  ask  the  special  relief  to  which  the  plaintiff  supposes 
himself  entitled,  and  also  shall  contain  a  prayer  for  general 
relief  ;  and  if  an  injunction,  or  a  writ  of  ne  exeat  regno  or  any 
other  special  order  pending  the  suit,  is  required,  it  shall  also 
be  specially  asked  for. 

RULE  22. 

If  any  persons,  other  than  those  named  as  defendants  in  the 
bill,  shall  appear  to  be  necessary  or  proper  parties  thereto,  the 
bill  shall  aver  the  reason  why  they  are  not  made  parties,  by 
showing  them  to  be  without  the  jurisdiction  of  the  court,  or 
that  they  cannot  be  joined  without  ousting  the  jurisdiction  of 
the  court  as  to  the  other  parties.  And  as  to  persons  who  are 
without  the  jurisdiction  and  may  properly  be  made  parties,  the 
bill  may  pray  that  process  may  issue  to  make  them  parties  to 
the  bill  if  they  should  come  within  the  jurisdiction. 

RULE  23. 

The  prayer  for  process  of  subpoena  in  the  bill  shall  contain 
the  names  of  all  the  defendants  named  in  the  introductory  part 
of  the  bill,  and  if  any  of  them  are  known  to  be  infants  under  age, 
or  otherwise  under  guardianship,  shall  state  the  fact,  so  that  the 
court  may  take  order  thereon  as  justice  may  require,  upon  the 
return  of  the  process.  If  an  injunction,  or  a  writ  of  ne  exeat, 
regno  or  any  other  special  order  pending  the  suit,  is  asked  for 
in  the  prayer  for  relief,  that  shall  be  sufficient  without  repeat- 
ing the  same  in  the  prayer  for  process. 


690  EQUITY  RULES. 

RULE  24. 

Every  bill  shall  contain  the  signature  of  counsel  annexed  to 
it,  which  shall  be  considered  as  an  affirmation  on  his  part  that 
upon  the  instructions  given  to  him  and  the  case  laid  before 
him,  there  is  good  ground  for  the  suit,  in  the  manner  in  which 
it  is  framed. 

RULE  25. 

In  order  to  prevent  unnecessary  costs  and  expenses,  and  to 
promote  brevity,  succinctness,  and  directness  in  the  allegations 
of  bills  and  answers,  the  regular  taxable  costs  for  every  bill  and 
answer  shall  in  no  case  exceed  the  sum  which  is  allowed  in  the 
State  court  of  chancery  in  the  district,  if  any  there  be  ;  but  if 
there  be  none,  then  it  shall  not  exceed  the  sum  of  three  dollars 
for  every  bill  or  answer. 

Scandal  and  Impertinence  in  Bills. 
RULE  26. 

Every  bill  shall  be  expressed  in  as  brief  and  succinct  terms 
as  it  reasonably  can  be,  and  shall  contain  no  unnecessary  re- 
citals of  deeds,  documents,  contracts,  or  other  instruments,  in 
hcec  verba,  or  any  other  impertinent  matter,  or  any  scandalous 
matter  not  relevant  to  the  suit.  If  it  does,  it  may  on  excep- 
tions be  referred  to  a  master  by  any  judge  of  the  court  for  im- 
pertinence or  scandal  ;  and  if  so  found  by  him,  the  matter 
shall  be  expunged  at  the  expense  of  the  plaintiff,  and  he  shall 
pay  to  the  defendant  all  his  costs  in  the  suit  up  to  that  time, 
unless  the  court  or  a  judge  thereof  shall  otherwise  order.  If 
the  master  shall  report  that  the  bill  is  not  scandalous  or  imper- 
tinent, the  plaintiff  shall  be  entitled  to  all  cost  occasioned  by 
the  reference. 

RULE  27. 

No  order  shall  be  made  by  any  judge  for  referring  any  bill, 
answer,  or  pleading,  or  other  matter  or  proceeding  depending 
before  the  court  for  scandal  or  impertinence,  unless  exceptions 
are  taken  in  writing  and  signed  by  counsel,  describing  the  par- 


EQUITY    RULES.  691 

ticular  passages  which  are  considered  to  be  scandalous  or  im- 
pertinent ;  nor  unless  the  exceptions  shall  be  filed  on  or  before 
the  next  rule-day  after  the  process  on  the  bill  shall  be  return- 
able, or  after  the  answer  or  pleading  is  tiled.  And  such  order, 
when  obtained,  shall  be  considered  as  abandoned,  unless  the 
party  obtaining  the  order  shall,  without  any  unnecessary  delay, 
procure  the  master  to  examine  and  report  for  the  same  on  or 
before  the  next  succeeding  rule-day,  or  the  master  shall  certi- 
fy that  further  time  is  necessary  for  him  to  complete  the  ex- 
amination. 

Amendment    of  Bills. 

KULE  28. 

The  plaintiff  shall  be  at  liberty,  as  a  matter  of  course,  and 
without  payment  of  costs,  to  amend  his  bill  in  any  matters 
whatsoever,  before  any  copy  has  been  taken  out  of  the  clerk's 
office,  and  in  any  small  matters  afterward,  such  as  filling  blanks, 
correcting  errors  of  dates,  misnomer  of  parties,  misdescription 
of  premises,  clerical  errors,  and  generally  in  matters  of  form. 
But  if  he  amend  in  a  material  point  (as  he  may  do  of  course), 
after  a  copy  has  been  so  taken,  before  any  answer,  or  plea,  or 
demurrer  to  the  bill,  he  shall  pay  to  the  defendant  the  costs 
occasioned  thereby,  and  shall,  without  delay,  furnish  him  a  fair 
copy  thereof  free  of  expense,  with  suitable  references  to  the 
places  where  the  same  are  to  be  inserted.  And  if  the  amend- 
ments are  numerous,  he  shall  furnish  in  like  manner,  to  the 
defendant,  a  copy  of  the  whole  bill  as  amended  ;  and  if  there 
be  more  than  one  defendant,  a  copy  shall  be  furnished  to  each 
defendant  affected  thereby. 

RULE  29. 

After  an  answer,  or  plea,  or  demurrer  is  put  in,  and  before 
replication,  the  plaintiff  may,  upon  motion  or  petition,  with- 
out notice,  obtain  an  order  from  any  judge  of  the  court  to 
amend  his  bill  on  or  before  the  next  succeeding  rule-day,  npon 
payment  of  costs  or  without  payment  of  costs,  as  the  court  or 
a  judge  thereof  may  in  his  discretion  direct.  But  after  repli- 


692  EQUITY    RULES. 

cation  filed,  the  plaintiff  shall  not  be  permitted  to  withdraw  it 
and  to  amend  his  bill,  except  upon  a  special  order  of  a  judge 
of  the  court,  upon  motion  or  petition,  after  due  notice  to  the 
other  party,  and  upon  proof  by  affidavit  that  the  same  is  not 
made  for  the  purpose  of  vexation  or  delay,  or  that  the  matter 
of  the  proposed  amendment  is  material,  and  could  not  with 
reasonable  diligence  have  been  sooner  introduced  into  the  bill, 
and  upon  the  plaintiff's  submitting  to  such  other  terms  as  may 
be  imposed  by  the  judge  for  speeding  the  cause. 

RULE  30. 

If  the  plaintiff,  so  obtaining  an  order  to  amend  his  bill  after 
answer,  or  plea,  or  demurrer,  or  after  replication,  shall  not  file 
his  amendments  or  amended  bill,  as  the  case  may  require,  in 
the  clerk's  office,  on  or  before  the  next  succeeding  rule-day, 
he  shall  be  considered  to  have  abandoned  the  same,  and  the 
cause  shall  proceed  as  if  no  application  for  any  amendment  had 
been  made. 

Demurrers    and   Pleas. 
RULE   31. 

No  demurrer  or  plea  shall  be  allowed  to  be  filed  to  any  bill, 
unless  upon  a  certificate  of  counsel  that  in  his  opinion  it  is  well 
founded  in  point  of  law,  and  supported  by  the  affidavit  of  the 
defendant  that  it  is  not  interposed  for  delay  ;  and  if  a  plea,  that 
it  is  tnie  in  point  of  fact. 

RULE    32, 

The  defendant  may,  at  any  time  before  the  bill  is  taken  for 
confessed,  or  afterward  with  the  leave  of  the  court,  demur  or 
plead  to  the  whole  bill,  or  to  part  of  it,  and  he  may  demur  to 
part,  plead  to  part,  and  answer  as  to  the  residue  ;  but  in  every 
case  in  which  the  bill  especially  charges  fraud  or  combination, 
a  plea  to  such  part  must  be  accompanied  with  an  answer  forti- 
fying the  plea,  and  explicitly  denying  the  fraud  and  combina- 
tion, and  the  facts  on  which  the  charge  is  founded. 


EQUITY  RULES.  .;:i;j 

RULE  33. 

The  plaintiff  may  set  down  the  demurrer  or  plea  to  be  argued, 
or  he  may  take  issue  on  the  plea.  If,  upon  an  issue,  the  facto 
stated  in  the  plea  he  determined  for  the  defendant,  they  shall 
avail  him  as  far  as  in  law  and  equity  they  ought  to  avail  him. 

RULE  34. 

If,  upon  the  hearing,  any  demurrer  or  plea  is  overruled,  the 
plaintiff  shall  be  entitled  to  his  costs  in  the  cause  up  to  that 
period,  unlesa  the  court  shall  be  satisfied  that  the  defendant  had 
good  ground  in  point  of  law  or  fact  to  interpose  the  same,  and 
it  was  not  interposed  vexatiously  or  for  delay.  And  upon  the 
overruling  of  any  plea  or  demurrer,  the  defendant  shall  be  as- 
signed to  answer  the  bill,  or  so  much  thereof  as  is  covered  by 
the  plea  or  demurrer,  the  next  succeeding  rule-day,  or  at  such 
other  period  as,  consistently  with  justice  and  the  rights  of  the  de- 
fendant, the  same  can,  in  the  judgment  of  the  court,  be  reason- 
ably done  ;  in  default  whereof,  the  bill  shall  be  taken  against  him, 
pro  confesso,  and  the  matter  thereof  proceeded  in  and  decreed 
accordingly. 

RULE  35. 

If,  upon  the  hearing,  any  demurrer  or  plea  shall  be  allowed, 
the  defendant  shall  be  entitled  to  his  costs.  But  the  court  may, 
in  its  discretion,  upon  motion  of  the  plaintiff,  allow  him  to 
amend  his  bill  upon  such  terms  as  it  shall  deem  reasonable. 

RULE  36. 

No  demurrrer  or  plea  shall  be  held  bad  and  overruled  upon 
argument,  only  because  such  demurrer  or  plea  shall  not  cover 
so  much  of  the  bill  as  it  might  by  law  have  extended  to. 

RULE  37. 

No  demurrer  or  plea  shall  be  held  bad  and  overruled  upon 
argument,  only  because  the  answer  of  the  defendant  may  extend 
to  some  part  of  the  same  matter  as  may  be  covered  by  such 
demurrer  or  plea. 


694:  EQUITY  RULES. 

KULE   38. 

If  the  plaintiff  shall  not  reply  to  any  plea,  or  set  down  any 
plea  or  demurrer  for  argument,  on  the  rule-day  when  the  same 
is  filed,  or  on  the  next  succeeding  rule-day,  he  shall  be  deemed 
to  admit  the  truth  aud  sufficiency  thereof,  and  his  bill  shall  be 
dismissed  as  of  course,  unless  a  judge  of  the  court  shall  allow 
him  further  time  for  the  purpose. 

Answers. 
KULE   39. 

The  rule,  that  if  a  defendant  submits  to  answer  he  shall  answer 
fully  to  all  the  matters  of  the  bill,  shall  no  longer  apply  in 
cases  where  he  might  by  plea  protect  himself  from  such 
answer  and  discovery.  And  the  defendant  shall  be  entitled  in 
all  cases  by  answer  to  insist  upon  all  matters  of  defence  (not 
being  matters  of  abatement,  or  to  the  character  of  the  parties, 
or  matters  of  form)  in  bar  of  or  to  the  merits  of  the  bill,  of 
which  he  may  be  entitled  to  avail  himself  by  a  plea  in  bar ; 
and  in  such  answer  he  shall  not  be  compellable  to  answer  any 
other  matters  than  he  would  be  compellable  to  answer  and  dis- 
cover upon  filing  a  plea  in  bar,  and  an  answer  in  support  of 
such  plea,  touching  the  matters  set  forth  in  the  bill,  to  avoid 
or  repel  the  bar  or  defence.  Thus,  for  example,  a  bona  fide 
purchaser  for  a  valuable  consideration,  without  notice,  may  set 
up  that  defence  by  way  of  answer  instead  of  plea,  and  shall  be 
entitled  to  the  same  protection,  and  shall  not  be  compellable  to 
make  any  further  answer  or  discovery  of  his  title  than  he  would 
be  in  any  answer  in  support  of  such  plea. 

KULE   40. 

It  shall  not  hereafter  be  necessary  to  interrogate  a  defendant 
specially  and  particularly  upon  any  statement  in  the  bill,  unless 
the  complainant  desires  to  do  so,  to  obtain  a  discovery. 

RULE   41. 

The  interrogatories  contained  in  the  interrogating  part  of  the 
bill  shall  be  divided  as  conveniently  as  may  be  from  each  other, 


EQUITY    RULES. 

and  numbered  consecutively  1,  2,  3,  &c.  ;  and  the  interroga- 
tories which  each  defendant  is  required  to  answer  shall  be  speci- 
fied in  a  note  at  the  foot  of  the  bill,  in  the  form  or  to  the 
effect  following,  that  is  to  say:  u  The  defendant  (A.  B.)  is 
required  to  answer  the  interrogatories  numbered  respectively 
1,  2,  3,"  <fec.;  and  the  office  copy  of  the  bill  taken  by  each 
defendant  shall  not  contain  any  interrogatories  except  those 
which  such  defendant  is  so  required  to  answer,  unless  such  de- 
fendant shall  require  to  be  furnished  with  a  copy  of  the  whole 
bill. 

If  the  complainant,  in  his  bill,  shall  waive  an  answer  under 
oath,  or  shall  only  require  an  answer  under  oath  with  regard  to 
certain  specified  interrogatories,  the  answer  of  the  defendant, 
though  under  oath,  except  such  part  thereof  as  shall  be  directly 
responsive  to  such  interrogatories,  shall  not  be  evidence  in  his 
favor,  unless  the  cause  be  set  down  for  hearing  on  bill  and 
answer  only  ;  but  may  nevertheless  be  used  as  an  affidavit,  with 
the  same  effect  as  heretofore,  on  a  motion  to  grant  or  dissolve  an 
injunction,  or  on  any  other  incidental  motion  in  the  cause ; 
but  this  shall  not  prevent  a  defendant  from  becoming  a  witness 
in  his  own  behalf  under  section  3  of  the  act  of  Congress  of 
July  2d,  1864. 

RULE  42. 

The*  note  at  the  foot  of  the  bill,  specifying  the  interrogato- 
ries which  each  defendant  is  required  to  answer,  shall  be  con- 
sidered and  treated  as  part  of  the  bill,  and  the  addition  of  any 
such  note  to  the  bill,  or  any  alteration  in  or  addition  to  such 
note  after  the  bill  is  tiled,  shall  be  considered  and  treated  It  an 
amendment  of  the  bill. 

RULE  43. 

Instead  of  the  words  of  the  bill  now  in  use,  preceding  the 
interrogating  part  thereof,  and  beginning  with  the  words  "  To 
the  end  therefore,"  there  shall  hereafter  be  used  words  in  the 
form  or  to  the  effect  following  :  "To  the  end,  therefore,  that 
the  said  defendants  may,  if  they  can,  show  why  your  orator 
should  not  have  the  relief  hereby  prayed,  and  may,  upon  their 


696  EQUITY    RULES. 

several  and  respective  corporal  oaths,  and  according  to  the  beet 
and  utmost  of  their  several  and  respective  knowledge,  remem- 
brance, information,  and  belief,  full,  true,  direct,  and  perfect 
answer  make  to  such  of  the  several  interrogatories  hereinafter 
numbered  and  set  forth,  as  by  the  note  hereunder  written  they 
are  respectively  required  to  answer  ;  that  is  to  say — 

"1.  Whether,  &c. 

"2.  Whether,  &c." 

RULE  44. 

A  defendant  shall  be  at  liberty,  by  answer,  to  decline  answer- 
ing any  interrogatory,  or  part  of  an  interrogatory,  from  answer- 
ing which  he  might  have  protected  himself  by  demurrer ;  and 
he  shall  be  at  liberty  so  to  decline,  notwithstanding  he  shall 
answer  other  parts  of  the  bill,  from  which  he  might  have  pro- 
tected himself  by  demurrer. 

RULE  45. 

No  special  replication  to  any  answer  shall  be  filed.  But  if 
any  matter  alleged  in  the  answer  shall  make  it  necessary  for 
the  plaintiff  to  amend  his  bill,  he  may  have  leave  to  amend 
the  same,  with  or  without  the  payment  of  costs,  as  the  court, 
or  a  judge  thereof,  may  in  his  discretion  direct. 

RULE  46.  * 

In  every  case  where  an  amendment  shall  be  made  after 
answer  filed,  the  defendant  shall  put  in  a  new  or  supplemental 
answer,  on  or  before  the  next  succeeding  rule-day  after  that  on 
which  the  amendment  or  amended  bill  is  filed,  unless  the  time 
is  enlarged  or  otherwise  ordered  by  a  judge  of  the  court ;  and 
upon  his  default  the  like  proceedings  may  be  had  as  in  cases  of 
an  omission  to  put  in  an  answer. 

Parties  to  Bills. 
RULE  47. 

In  all  cases  where  it  shall  appear  to  the  court  that  persons, 
who  might  otherwise  be  deemed  necessary  or  proper  parties  to 


EQUITY    HULES.  .;;«7 

the  suit,  cannot  be  made  parties  by  reason  of  their  being  out 
of  the  jurisdiction  of  the  court,  or  incapable  otherwise  of  being 
made  parties,  or  because  their  joinder  would  oust  the  jurisdic- 
tion of  the  court  as  to  the  parties  before  the  court,  the  court 
may  in  their  discretion  proceed  in  the  cause  without  making 
such  persons  parties  ;  and  in  such  cases  the  decree  shall  be 
without  prejudice  to  the  rights  of  the  absent  parties. 

RULE  48. 

Where  the  parties  on  either  side  are  very  numerous,  and 
cannot,  without  manifest  inconvenience  and  oppressive  delays 
in  the  suit,  be  all  brought  before  it,  the  court  in  its  discretion 
may  dispense  with  making  all  of  them  parties,  and  may  pro- 
ceed in  the  snit,  having  sufficient  parties  before  it  to  represent 
all  the  adverse  interests  of  the  plaintiffs  and  the  defendants  in 
the  suit  properly  before  it.  But  in  such  cases  the  decree  shall 
be  without  prejudice  to  the  rights  and  claims  of  all  the  absent 
parties. 

RULE  49. 

In  all  suits  concerning  real  estate,  which  is  vested  in  trustees 
by  devise,  and  such  trustees  are  competent  to  sell  and  give  dis- 
charges for  the  proceeds  of  the  sale,  and  for  the  rents  and 
profits  of  the  estate,  such  trustees  shall  represent  the  persons 
beneficially  interested  in  the  estate,  or  the  proceeds,  or  the 
rents  and  profits,  in  the  same  manner,  and  to  the  same  extent, 
as  the  executors  or  administrators  in  suits  concerning  personal 
estate  represent  the  persons  beneficially  interested  in  such  per- 
sonal estate  ;  and  in  such  cases  it  shall  not  be  necessary  to  make 
the  persons  beneficially  interested  in  such  real  estate,  or  rente 
and  profits,  parties  to  the  suit ;  but  the  court  may,  upon  consider- 
ation of  the  matter  on  the  hearing,  if  it  shall  so  think  tit,  order 
such  persons  to  be  made  parties. 

RULE  50. 

In  suits  to  execute  the  trusts  of  a  will,  it  shall  not  be  neces- 
sary to  make  the  heir-at-law  a  party  ;  but  the  plaintff  shall  be  at 
liberty  to  make  the  heir-at-law  a  party  where  he  desires  to  have 
the  will  established  against  him. 


698  EQUITY  RULES. 

RULE  51. 

In  all  cases  in  which  the  plaintiff  has  a  joint  and  several 
demand  against  several  persons,  either  as  principals  or  sureties, 
it  shall  not  be  necessary  to  bring  before  the  court,  as  parties  to 
a  suit  concerning  such  demand,  all  the  persons  liable  thereto 
but  the  plaintiff  may  proceed  against  one  or  more  of  the  persons 
severally  liable. 

RULE  52. 

Where  the  defendant  shall,  by  his  answer,  suggest  that  the 
bill  is  defective  for  want  of  parties,  the  plaintiff  shall  be  at 
liberty,  within  fourteen  days  after  answer  filed,  to  set  down  the 
cause  for  argument  upon  that  objection  only  ;  and  the  purpose 
for  which  the  same  is  so  set  down  shall  be  notified  by  an  entry, 
to  be  made  in  the  clerk's  order-book,  in  the  form  or  to  the 
effect  following,  that  is  to  say  :  "  Set  down  upon  the  defend- 
ant's objection  for  want  of  parties."  And  where  the  plain- 
tiff shall  not  so  set  down  his  cause,  but  shall  proceed  therewith 
to  a  hearing,  notwithstanding  an  objection  for  want  of  parties 
taken  by  the  answer,  he  shall  not,  at  the  hearing  of  the  cause,  if 
the  defendant's  objections  shall  then  be  allowed,  be  entitled  as 
of  course  to  an  order  for  liberty  to  amend  his  bill  by  adding 
parties.  But  the  court,  if  it  thinks  fit,  shall  be  at  liberty  to 
dismiss  the  bill. 

RULE  53. 

If  a  defendant  shall,  at  the  hearing  of  a  cause,  object  that  a 
suit  is  defective  for  want  of  parties  not  having  by  plea  or  answer 
taken  the  objection,  and  therein  specified  by  name  or  de- 
scription the  parties  to  whom  the  objection  applies,  the  court 
(if  it  shall  think  fit)  shall  be  at  liberty  to  make  a  decree  saving 
the  rights  of  the  absent  parties. 

Nominal  Parties  to  Bills. 
RULE  54. 

Where  no  account,  payment,  conveyance,  or  other  direct 
relief  is  sought  against  a  party  to  a  suit,  not  being  an  infant, 


EQUITY    RULES. 

the  party,  upon  service  of  the  subpoena  upon  him,  need  not 
appear  and  answer  the  bill,  unless  the  plaintiff  specially  re- 
quires  him  so  to  do  by  the  prayer  of  his  bill  ;  but  he  inay 
appear  and  answer,  at  his  option  ;  and  if  he  does  not  appear  and 
answer  he  shall  be  bound  by  all  the  proceedings  in  the  cause. 
If  the  plaintiff  shall  require  him  to  appear  and  answer,  he  shall 
be  entitled  to  the  costs  of  all  the  proceedings  against  him, 
unless  the  court  shall  otherwise  direct. 

RULE  55. 

Whenever  an  injunction  is  asked  for  by  the  bill  to  stay  pro- 
ceedings at  law,  if  the  defendant  do  not  enter  his  appearance  and 
plead,  demur,  or  answer  to  the  same  within  the  time  prescribed 
therefor  by  these  rules,  the  plaintiff  shall  be  entitled  as  of 
course,  upon  motion  without  notice,  to  such  injunction.  But 
special  injunctions  shall  be  grantable  only  upon  due  notice  to 
the  other  party  by  the  court  in  term,  or  by  a  judge  thereof 
in  vacation,  after  a  hearing,  which  may  be  ex-parte,  if  the  ad- 
verse party  does  not  appear  at  the  time  and  place  ordered.  In 
every  case  where  an  injunction,  either  the  common  injunction 
or  a  special  injunction,  is  awarded  in  vacation,  it  shall,  unless 
previously  dissolved  by  the  judge  granting  the  same,  continue 
until  the  next  term  of  the  court,  or  until  it  is  dissolved  by  some 
other  order  of  the  court. 

Bitts  of  Reviver  and  Supplemental  B'M*. 
RULE  56. 

Whenever  a  suit  in  equity  shall  become  abated  by  the  death 
of  either  party,  or  by  any  other  event,  the  same  may  be  re- 
vived by  a  bill  of  revivor,  or  a  bill  in  the  nature  of  a  bill  of  re- 
vivor,  as  the  circumstances  of  the  case  may  require,  filed  by 
the  proper  parties  entitled  to  revive  the  same,  which  bill  maybe 
filed  in  the  clerk's  office  at  any  time  ;  and  upon  suggestion  of 
the  facts,  the  proper  process  of  subpoana  shall,  as  of  course,  be 
issued  by  the  clerk,  requiring  the  proper  representatives  of  tho 
other  party  to  appear  and  show  cause,  if  any  they  have,  why 
the  cause  should  not  be  revived.  And  if  no  cause  shall  be 


700  EQUITY    RULES. 

shown  at  the  next  rule-day  which  shall  occur  after  fourteen 
days  from  the  time  of  the  service  of  the  same  process,  the  suit 
shall  stand  revived,  as  of  course. 

RULE  57. 

Whenever  any  suit  in  equity  shall  become  defective,  from 
any  event  happening  after  the  filing  of  the  bill  (as,  for  example, 
by  change  of  interest  in  the  parties),  or  for  any  other  reason, 
a  supplemental  bill,  or  a  bill  in  the  nature  of  a  supplemental 
bill,  may  be  necessary  to  be  filed  in  the  cause,  leave  to  file  the 
same  may  be  granted  by  any  judge  of  the  court  on  any  rule- 
day,  upon  proper  cause  shown,  and  due  notice  to  the  other 
party.  And  if  leave  is  granted  to  file  such  supplemental  bill, 
the  defendant  shall  demur,  plead,  or  answer  thereto,  on  the 
next  succeeding  rule-day  after  the  supplemental  bill  is  filed  in 
the  clerk's  office,  unless  some  other  time  shall  be  assigned  by  a 
judge  of  the  court. 

RULE  58. 

It  shall  not  be  necessary  in  any  bill  of  revivor,  or  supplemen- 
tal bill,  to  set  forth  any  of  the  statements  in  the  original  suit, 
unless  the  special  circumstances  of  the  case  may  require  it. 

Answers. 
RULE  59. 

Every  defendant  may  swear  to  his  answer  before  any  justice 
or  judge  of  any  court  of  the  United  States,  or  before  any  com- 
missioner appointed  by  any  circuit  court  to  take  testimony  or 
depositions,  or  before  any  master  in  chancery  appointed  by  any 
circuit  court,  or  before  any  judge  of  any  court  of  a  State  or 
Territory,  or  before  any  notary  public. 

Amendment  of  Answers. 
RULE  60. 

After  an  answer  is  put  in,  it  may  be  amended  as  of  course, 
in  any  matter  of  form,  or  by  filling  up  a  blank,  or  correcting  a 
date,  or  reference  to  a  document  or  other  small  matter,  and 


EQUITY   RULES.  70J 

be  resworn,  at  any  time  before  a  replication  is  put  in,  or  the 
cause  is  set  down  for  a  hearing  upon  bill  and  answer.  But 
after  replication,  or  such  setting  down  for  a  hearing,  it  shall 
not  be  amended  in  any  material  matters,  as  by  adding  new  facts 
or  defences,  or  qualifying  or  altering  the  original  statement*, 
except  by  special  leave  of  the  court  or  of  a  judge  thereof, 
upon  motion  and  cause  shown  after  due  notice  to  the  adverse 
party,  supported,  if  required,  by  affidavit.  And  in  every  case 
where  leave  is  so  granted,  the  court,  or  the  judge  granting  the 
same,  may,  in  his  discretion,  require  that  the  same  be  separately 
engrossed,  and  added  as  a  distinct  amendment  to  the  original 
answer,  so  as  to  be  distinguishable  therefrom. 

Exceptions  to  Answers. 
KULE  61. 

After  an  answer  is  filed  on  any  rule-day,  the  plaintiff  shall 
be  allowed  until  the  next  succeeding  rule-day  to  file  in  the  clerk's 
office  exceptions  thereto  for  insufficiency,  and  no  longer,  un- 
less a  longer  time  shall  be  allowed  for  the  purpose,  upon  cave 
shown  to  the  court  or  a  judge  thereof  ;  and  if  no  exceptions 
shall  be  filed  thereto  within  that  period,  the  answer  shall  be 
deemed  and  taken  to  be  sufficient. 

RULE  62. 

When  the  same  solicitor  is  employed  for  two  or  more  defend- 
ants, and  separate  answers  shall  be  filed,  or  other  proceedings 
had  by  two  or  more  of  the  defendants  separately,  costs  shall 
not  be  allowed  for  such  separate  answers  or  other  proceedings, 
unless  a  master,  upon  reference  to  him,  shall  certify  that  such 
separate  answers  and  other  proceedings  were  necessary  or  prop- 
er, and  ought  not  to  have  been  joined  together. 

RULE  63. 

Where  exceptions  shall  be  filed  to  the  answer  for  insufficien- 
cy within  the  period  prescribed  by  these  rules,  if  the  defend- 
ant shall  not  submit  to  the  same  and  file  an  amended  answer 
on  the  next  succeeding  rule-day,  the  plaintiff  shall  forthwith 


EQUITY   RULES. 

set  them  down  for  a  hearing  on  the  next  succeeding  rule-day 
thereafter  before  a  judge  of  the  court,  and  shall  enter,  as  of 
course,  in  the  order  book,  an  order  for  that  purpose.  And  if 
he  shall  not  so  set  down  the  same  for  a  hearing,  the  exceptions 
shall  be  deemed  abandoned,  and  the  answer  shall  be  deemed 
sufficient ;  provided,  however,  that  the  court,  or  any  judge 
thereof,  may,  for  good  cause  shown,  enlarge  the  time  for  filing 
exceptions,  or  for  answering  the  same,  in  his  discretion,  upon 
such  terms  as  he  may  deem  reasonable.  4 

RULE  64. 

If,  at  the  hearing  the  exceptions  shall  be  allowed,  the  defend- 
ant shall  be  bound  to  put  in  a  full  and  complete  answer  thereto 
on  the  next  succeeding  rule-day  ;  otherwise  the  plaintiff  shall, 
as  of  course,  be  entitled  to  take  the  bill,  so  far  as  the  matter 
of  such  exceptions  is  concerned,  as  confessed,  or,  at  his  election, 
he  may  have  a  writ  of  attachment  to  compel  the  defendant  to 
make  a  better  answer  to  the  matter  of  the  exceptions  ;  and  the 
defendant,  when  he  is  in  custody  upon  such  writ,  shall  not  be 
discharged  therefrom  but  by  an  order  of  the  court,  or  of  a 
judge  thereof,  upon  his  putting  in  such  answer  and  complying 
with  such  other  terms  as  the  court  or  judge  may  direct. 

RULE  65. 

If,  upon  argument,  the  plaintiff's  exceptions  to  the  answer 
shall  be  overruled,  or  the  answer  shall  be  adjudged  insufficient, 
the  prevailing  party  shall  be  entitled  to  all  the  costs  occasioned 
thereby,  unless  otherwise  directed  by  the  court,  or  the  judge 
thereof,  at  the  hearing  upon  the  exceptions. 

Replication  and  Issue. 
RULE  66. 

Whenever  the  answer  of  the  defendant  shall  not  be  excepted 
to,  or  shall  be  adjudged  or  deemed  sufficient,  the  plaintiff  shall 
file  the  general  replication  thereto  on  or  before  the  next  suc- 
ceeding rule-day  thereafter  ;  and  in  all  cases  where  the  general 
replication  is  filed  the  cause  shall  be  deemed  to  all  intents  and 


EQUITY   RULES.  703 

purposes  at  issne,  without  any  rejoinder  or  other  pleading  on 
either  side.  If  the  plaintiff  shall  olnit  or  refuse  to  file  snch 
replication  within  the  prescribed  period,  the  defendant  shall  he 
entitled  to  an  order,  as  of  course,  for  a  dismissal  of  the  suit ; 
and  the  suit  shall  thereupon  stand  dismissed,  unless  the  court, 
or  a  judge  thereof,  shall,  upon  motion  for  cause  shown,  allow  a 
replication  to  be  filed  nuncpro  tune,  the  plaintiff  submitting  to 
speed  the  cause,  and  to  such  other  terms  as  may  be  directed. 

Testimony — How  Taken. 
RULE  67. 

After  the  cause  is  at  issue,  commissions  to  take  testimony 
may  be  taken  out  in  vacation  as  well  as  in  term,  jointly  by 
both  parties,  or  severally  by  either  party,  upon  interrogatories 
filed  by  the  party  taking  out  the  same  in  the  clerk's  office,  ten 
days'  notice  thereof  being  given  to  the  adverse  party  to  file 
cross-interrogatories  before  the  issuing  of  the  commission  ;  and 
if  no  cross-interrogatories  are  filed  at  the  expiration  of  the  time, 
the  commission  may  issue  ex  parte.  In  all  cases  the  commis- 
sioner or  commissioners  shall  be  named  by  the  court,  or  by  a 
judge  thereof.  And  the  presiding  judge  of  any  court  exercising 
jurisdiction,  either  in  term  time  or  in  vacation,  may  vest  in  the 
clerk  of  said  court  general  power  to  name  commissioners  to 
take  testimony  in  like  manner. 

Either  party  may  give  notice  to  the  other  that  he  desires  the 
evidence  to  be  adduced  in  the  cause  to  be  taken  orally,  and 
thereupon  all  the  witnesses  to  be  examined  shall  be  examined 
before  one  of  the  examiners  of  the  court,  or  before  an  examiner 
to  be  specially  appointed  by  the  court,  the  examiner  to  be  fur- 
nished with  a  copy  of  the  bill  and  answer,  if  any  ;  and  such 
examination  shall  take  place  in  the  presence  of  the  parties  or 
their  agents,  by  their  counsel  or  solicitors,  and  the  witnesses 
shall  be  subject  to  cross-examination,  and  re-examination,  and 
which  shall  be  conducted,  as  near  as  may  be,  in  the  mode  now 
used  in  common-law  courts.  The  depositions  taken  upon  such 
oral  examination  shall  be  taken  down  in  writing  by  the  ex- 
aminer in  the  form  of  narrative,  unless  he  determines  the 


704  EQUITY    RULES. 

examination  shall  be  by  question  and  answer  in  special  instances  ; 
and  when  completed,  shall  be  read  over  to  the  witness  and 
signed  by  him  in  the  presence  of  the  parties  or  counsel,  or  such 
of  them  as  may  attend ;  provided,  if  the  witness  shall  refuse 
to  sign  the  said  deposition,  then  the  examiner  shall  sign  the 
same ;  and  the  examiner  may  upon  all  examinations  state 
any  special  matters  to  the  court  as  he  shall  think  fit ;  and  any 
question  or  questions  which  may  be  objected  to  shall  be  noted 
by  the  examiner  upon  the  deposition,  but  he  shall  not  have 
power  to  decide  cm  the  competency,  materiality,  or  relevancy 
of  the  questions  ;  and  the  court  shall  have  power  to  deal  with 
the  costs  of  incompetent,  immaterial,  or  irrelevant  depositions, 
or  parts  of  them,  as  may  be  just. 

In  case  of  refusal  of  witnesses  to  attend,  to  be  sworn,  or  to 
answer  any  question  put  by  the  examiner  or  by  counsel  or 
solicitor,  the  same  practice  shall  be  adopted  as  is  now  practised 
with  respect  to  witnesses  to  be  produced  on  examination  be- 
fore an  examiner  of  said  court  on  written  interrogatories. 

Notice  shall  be  given  by  the  respective  counsel  or  solicitors, 
to  the  opposite  counsel  or  solicitors,  or  parties,  of  the  time  and 
place  of  the  examination,  for  such  reasonable  time  as  the 
examiner  may  fix  by  order  in  each  cause. 

When  the  examination  of  witnesses  before  the  examiner  is 
concluded,  the  original  deposition,  authenticated  by  the  signa- 
ture of  the  examiner,  shall  be  transmitted  by  him  to  the  clerk 
of  the  court,  to  be  there  filed  of  record  in  the  same  mode  as 
prescribed  in  the  thirtieth  section  of  act  of  Congress,  September 
24th,  1789. 

Testimony  may  be  taken  on  commission  in  the  usual  way  by 
written  interrogatories,  and  cross-interrogatories,  on  motion  to 
the  court  in  term  time,  or  to  a  judge  in  vacation,  for  special 
reasons  satisfactory  to  the  court  or  judge. 

Where  the  evidence  to  be  adduced  in  a  cause  is  to  be  taken 
orally,  as  provided  in  the  order  passed  at  the  December  Term, 
1861,  amending  the  67th  General  Rule,  the  court  may,  on 
motion  of  either  party,  assign  a  time  within  which  the  com- 
plainant shall  take  his  evidence  in  support  of  the  bill,  and  a  time 
thereafter  within  which  the  defendant  shall  take  his  evidence 


EQUITY  BULES.  7,,-, 

in  defence,  and  a  time  thereafter  within  which  the  complainant 
shall  take  his  evidence  in  reply  ;  and  no  further  evidence  shall 
be  taken  m  the  cause  unless  by  agreement  of  the  parties,  or  by 
leave  of  court  first  obtained  on  motion  for  cause  shown. 

KULE  68. 

Testimony  may  also  be  taken  in  the  cause,  after  it  is  at  issue, 
by  deposition,  according  to  the  acts  of  Congress.  But  in  such 
case,  if  no  notice  is  given  to  the  adverse  party  of  the  time  and 
place  of  taking  the  deposition,  he  shall,  upon  motion  and  affi- 
davit of  the  fact,  be  entitled  to  a  cross-examination  of  the  wit- 
ness, either  under  a  commission  or  by  a  new  deposition  taken 
under  the  acts  of  Congress,  if  a  court  or  a  judge  thereof  shall, 
under  all  the  circumstances,  deem  it  reasonable. 

RULE  69. 

Three  months,  and  no  more,  shall  be  allowed  for  the  taking 
of  testimony  after  the  cause  is  at  issue,  unless  the  court  or  a 
judge  thereof  shall,  upon  special  cause  shown  by  either  party, 
enlarge  the  time  ;  and  no  testimony  taken  after  such  period 
shall  be  allowed  to  be  read  in  evidence  at  the  hearing.  Im- 
mediately upon  the  return  of  the  commissions  and  depositions, 
containing  the  testimony,  into  the  clerk's  office,  publication 
thereof  may  be  ordered  in  the  clerk's  office,  by  any  judge  of 
the  court,  upon  due  notice  to  the  parties,  or  it  may  be  enlarged, 
as  he  may  deem  reasonable  under  all  the  circumstances.  Bnt, 
by  consent  of  the  parties,  publication  of  the  testimony  may  at 
any  time  pass  in  the  clerk's  office,  such  consent  being  in  writ- 
ing, and  a  copy  thereof  entered  in  the  order-books,  or  indorsed 
upon  the  deposition  or  testimony. 

Testimony  De  Bene  JEsse. 
RULE  70. 

After  any  bill  filed,  and  before  the  defendant  hath  answered 
the  same,  upon  affidavit  made  that  any  of  the  plantifTs  wit- 
nesses are  aged  and  infirm,  or  going  out  of  the  country,  or  that 
any  one  of  them  is  a  single  witness  to  a  material  fact,  the  clerk  of 


706  EQUITY    RULES. 

the  court  shall,  as  of  course,  upon  the  application  of  the  plain- 
tiff, issue  a  commission  to  such  commissioner  or  commis- 
sioners, as  a  judge  of  the  court  may  direct,  to  take  the  exam- 
ination of  such  witness  or  witnesses  de  bene  esse  upon  giving 
due  notice  to  the  adverse  party  of  the  time  and  place  of  taking 
his  testimony. 

Form  of  the  Last  Interrogatory. 
KULE  71. 

The  last  interrogatory  in  the  written  interrogatories  to  take 
testimony  now  commonly  in  use,  shall  in  the  future  be  altered, 
and  stated  in  substance  thus  :  "Do you  know,  or  can  you  set 
forth,  any  other  matter  or  thing  which  may  be  a  benefit  or  ad- 
vantage to  the  parties  at  issue  in  this  cause,  or  either  of  them,  or 
that  may  be  material  to  the  subject  of  this  your  examination,  or 
the  matters  in  question  in  this  cause  ?  If  yea,  set  forth  the 
same  fully  and  at  large  in  your  answer." 

i  Cross-Bill. 

RULE  72. 

Where  a  defendant  in  equity  files  a  cross-bill  for  discovery' 
only  against  the  plaintiff  in  the  original  bill,  the  defendant  to 
the  original  bill  shall  first  answer  thereto,  before  the  original 
plaintiff  shall  be  compellable  to  answer  the  cross-bill.  The 
answer  of  the  original  plaintiff  to  such  cross-bill  may  be  read  and 
used  by  the  party  filing  the  cross-bill  at  the  hearing,  in  the  same 
manner  and  under  the  same  restrictions  as  the  answer  praying 
relief  may  now  be  read  and  used. 

Reference  to  and  Proceedings  before  Masters. 
EULE  73. 

Every  decree  for  an  account  of  the  personal  estate  of  a 
testator  or  intestate  shall  contain  a  direction  to  the  master,  to 
whom  it  is  referred  to  take  the  same,  to  inquire  and  state  to 
the  court  what  parts,  if  any,  of  such  personal  estate  are  out- 


EQUITY    RULES.  707 

standing  or  undisposed  of,  unless  the  court  shall  otherwise 
direct. 

RULE  74. 

Whenever  any  reference  of  any  matter  is  made  to  a  master 
to  examine  and  report  thereon,  the  party  at  whose  instance,  or 
for  whose  benefit,  the  reference  is  made,  shall  cause  the  same 
to  be  presented  to  the  master  for  a  hearing  on  or  before  the 
next  rule-day  succeeding  the  time  when  the  reference  was 
made  ;  if  he  shall  omit  to  do  so,  the  adverse  party  shall  be  at 
liberty  forthwith  to  cause  proceedings  to  be  had  before  the 
master,  at  the  costs  of  the  party  procuring  the  reference. 

RULE  75. 

Upon  every  such  reference  it  shall  be  the  duty  of  the  master, 
as  soon  as  he  reasonably  can,  after  the  same  is  brought  before 
him,  to  assign  a  time  and  place  for  proceedings  in  the  same, 
and  to  give  due  notice  thereof  to  each  of  the  parties  or  their 
solicitors  ;  and  if  either  party  shall  fail  to  appear  at  the  time 
and  place  appointed,  the  master  shall  be  at  liberty  to  proceed 
exparte,  or,  in  his  discretion,  to  adjourn  the  examination  and 
proceedings  to  a  future  day,  giving  notice  to  the  absent  party 
or  his  solicitor  of  such  adjournment  ;  and  it  shall  be  the  doty 
of  the  master  to  proceed  with  all  reasonable  diligence  in  every 
such  reference,  and  with  the  least  practicable  delay,  and  either 
party  shall  be  at  liberty  to  apply  to  the  court,  or  a  judge 
thereof,  for  an  order  to  the  master  to  speed  the  proceedings, 
and  to  make  his  report,  and  to  certify  to  the  court  or  judge 
the  reasons  for  any  delay. 

RULK  76. 

In  the  reports  made  by  the  master  to  the  court  no  part  of  any 
state  of  facts,  charge,  affidavit,  deposition,  examination,  or 
answer  brought  in  or  used  before  them  shall  be  stated  or 
recited.  But  such  state  of  facts,  charge,  affidavit,  deposition,  ex- 
amination, or  answer  shall  be  identified,  specified,  and  referred 
to,  so  as  to  inform  the  court  what  state  of  facts,  charge,  affidavit, 
deposition,  examination,  or  answer  were  so  brought  in  or  used. 


708  EQUITY   RULES. 

KULE  77. 

The  master  shall  regulate  all  the  proceedings  in  every  hear- 
ing before  him,  upon  every  such  reference  ;  and  he  shall  have 
full  authority  to  examine  the  parties  in  the  cause,  upon  oath, 
touching  all  matters  contained  in  the  reference  ;  and  also  to 
require  the  production  of  all  books,  papers,  writings,  vouchers, 
angl  other  documents  applicable  thereto  ;  and  also  to  examine 
an  oath,  viva  voce,  all  witnesses  produced  by  the  parties  before 
him,  and  to  order  the  examination  of  other  witnesses  to  be 
taken,  under  a  commission  to  be  issued  npon  his  certificate  from 
the  clerk's  office,  or  by  deposition,  according  to  the  acts  of 
Congress,  or  otherwise,  as  hereinafter  provided  ;  and  also  to 
direct  the  mode  in  which  the  matters  requiring  evidence  shall 
be  proved  before  him  ;  and  generally  to  do  all  other  acts,  and 
direct  all  other  inquiries  and  proceedings  in  the  matters  before 
him,  which  he  may  deem  necessary  and  proper  to  the  justice 
and  merits  thereof  and  the  rights  of  the  parties. 

EULE  78. 

Witnesses  who  live  within  the  district  may,  upon  due  notice 
to  the  opposite  party,  be  summoned  to  appear  before  the  com- 
missioner appointed  to  take  testimony,  or  before  a  master  or 
examiner  appointed  in  any  cause,  by  subposna  in  the  usual 
form,  which  may  be  issued  by  the  clerk  in  blank,  and  iilled 
up  by  the  party  praying  the  same,  or  by  the  commissioner, 
master,  or  examiner,  requiring  the  attendance  of  the  witnesses 
at  the  time  and  place  specified,  who  shall  be  allowed  for 
attendance  the  same  compensation  as  for  attendance  in  court ; 
and  if  any  witness  shall  refuse  to  appear  or  to  give  evidence, 
it  shall  be  deemed  a  contempt  of  the  court,  which,  being  cer- 
tified to  the  clerk's  office  by  the  commissioner,  master,  or 
examiner,  an  attachment  may  issue  thereupon  by  order  of  the 
court  or  of  any  judge  thereof,  in  the  same  manner  as  if  the 
contempt  were  for  not  attending,  or  for  refusing  to  give  tes- 
timony in  the  court.  But  nothing  herein  contained  shall 
prevent  the  examination  of  witnesses  viva  voce  when  produced 
in  open  court,  if  the  court  shall,  in  its  discretion,  deem  it 
advisable. 


EQUITY  BULKS. 

RULE  79. 

All  parties  accounting  before  a  master  shall  bring  in  their 
respective  accounts  in  the  form  of  debtor  and  creditor;  and 
any  of  the  other  parties  who  shall  not  be  satisfied  with  the 
accounts  so  brought  in  shall  be  at  liberty  to  examine  the  ac- 
counting party,  viva  voce,  or  upon  interrogatories  in  the 
master's  office,  or  by  deposition,  as  the  master  shall  direct. 

RULE  80. 

All  affidavits,  depositions,  and  documents  which  have  been 
previously  made,  read,  or  used  in  the  court,  upon. any  pro- 
ceeding  in  any  cause  or  matter,  may  be  used  before  the  master. 

RULE  81. 

The  master  shall  be  at  liberty  to  examine  any  creditor  or 
other  person  coming  in  to  claim  before  him,  either  upon 
written  interrogatories  or  vwa  voce,  or  in  both  modes,  as  the 
nature  of  the  case  may  appear  to  him  to  require.  The  evidence 
upon  such  examinations  shall  be  taken  down  by  the  master,  or 
by  some  other  person  by  his  order  and  in  his  presence,  if 
either  party  requires  it,  in  order  that  the  same  may  be  used 
by  the  court,  if  necessary. 

RULE  82. 

The  circuit  courts  may  appoint  standing  masters  in  chancery 
in  their  respective  districts,  both  the  judges  concurring  in  the 
appointment  ;  and  they  may  also  appoint  a  master  pro  hae 
vice  in  any  particular  case.  The  compensation  to  be  allowed 
to  every  master  in  chancery  for  his  services  in  any  particular 
case,  shall  be  fixed  by  the  circuit  court  in  its  discretion,  having 
regard  to  all  the  circumstances  thereof,  and  the  compensation 
shall  be  charged  upon  and  borne  by  such  of  the  parties  in  tho 
cause  as  the  court  shall  direct.  The  master  shall  not  retain 
his  report  as  security  for  his  compensation  ;  but  when  the 
compensation  is  allowed  by  the  court,  he  shall  be  entitled  to 
an  attachment  for  the  amount  against  the  party  who  is  ordered 
to  pay  the  same,  if,  upon  notice  thereof,  he  does  not  pay  it 
within  the  time  prescribed  by  the  court. 


710  EQUITY    EULES. 

Exceptions  to  Report  of  Master. 
KULE  83. 

The  master,  as  soon  as  liis  report  is  ready,  shall  return  the 
same  into  the  clerk's  office,  and  the  day  of  the  return  shall  be 
enteied  by  the  clerk  in  the  order-book.  The  parties  shall  have 
one  mouth  from  the  time  of  filing  the  report  to  file  exceptions 
thereto  ;  and  if  no  exceptions  are  within  that  period  filed  by 
either  party,  the  report  shall  stand  confirmed  on  the  next  rule- 
day  after  the  month  is  expired.  If  exceptions  are  filed,  they 
shall  stand  for  hearing  before  the  court,  if  the  court  is  then  in 
session  ;  or,  if  not,  then  at  the  next  sitting  of  the  court  which 
shall  be  held  thereafter  by  adjournment  or  otherwise. 

KULE  84. 

And  in  order  to  prevent  exceptions  to  reports  from  being 
filed  for  frivolous  causes,  or  for  mere  delay,  the  party  whose 
exceptions  are  overruled  shall,  for  every  exception  overruled, 
pay  costs  to  the  other  party,  and  for  every  exception  allowed 
shall  be  entitled  to  costs  ;  the  costs  to  be  fixed  in  each  case  by 
the  court,  by  a  standing  rule  of  the  circuit  court. 

Decrees. 

RULE  85. 

Clerical  mistakes  in  decrees,  or  decretal  orders,  or  errors 
arising  from  any  accidental  slip  or  omission,  may,  at  any  time 
before  an  actual  enrollment  thereof,  be  corrected  by  order  of 
the  court  or  a  judge  thereof,  upon  petition,  without  the  form 
or  expense  of  a  rehearing. 

RULE  86. 

In  drawing  up  decrees  and  orders,  neither  the  bill,  nor 
answer,  nor  other  pleadings,  nor  any  part  thereof,  nor  the  re- 
port of  any  master,  nor  any  other  prior  proceeding,  shall  be 
recited  or  stated  in  the  decree  or  order ;  but  the  decree  and 
order  shall  begin,  in  substance,  as  follows  :  "  This  cause  came 
on  to  be  heard  (or  to  be  further  heard,  as  the  case  may  be)  at 


EQUITY  EULE8.  71 X 

this  term,  and  was  argued  by  counsel ;  and  thereupon,  upon 
consideration  thereof,  it  was  ordered,  adjudged,  and  decreed 
as  follows,  viz. ;' '  [Here  insert  the  decree  or  order.] 


Guardians  and  Prochein  Amis. 
RULE  87. 

Guardians  ad  litem  to  defend  a  suit  may  be  appointed  by  the 
court,  or  by  any  judge  thereof,  for  infants  or  other  persons 
who  are  under  guardianship,  or  otherwise  incapable  to  sue  for 
themselves.  All  infants  and  other  persons  so  incapable  may 
sue  by  their  guardians,  if  any,  or  by  their prockein  ami;  sub- 
ject, however,  to  such  orders  as  the  court  may  direct  for  the 
protection  of  infants  and  other  persons. 

Rehearing. 

RULE  88. 

Every  petition  for  a  rehearing  shall  contain  the  special  mat- 
ter or  cause  on  which  such  rehearing  is  applied  for,  shall  be 
signed  by  counsel,  and  the  facts  therein  stated,  if  not  apparent 
on  the  record,  shall  be  verified  by  the  oath  of  the  party,  or  by 
some  other  person.  No  rehearing  shall  be  granted  after  the 
term  at  which  the  final  decree  of  the  court  shall  have  been  en- 
tered and  recorded,  if  an  appeal  lies  to  the  Supreme  Court, 
But  if  no  appeal  lies,  the  petition  may  be  admitted  at  any  time 
before  the  end  of  the  next  term  of  the  court,  in  the  discretion 
of  the  court. 

RULE  89. 

The  circuit  courts  (both  judges  concurring  therein)  may 
make  any  other  and  further  rules  and  regulations  for  the  prac- 
tice, proceedings,  and  process,  meme  and  final,  in  their 
respective  districts,  not  inconsistent  with  the  rules  hereby 
prescribed,  in  their  discretion,  and  from  time  to  time  alter 
and  amend  the  same. 


712  EQUITY  KULES. 

RULE  90. 

In  all  cases  where  the  rules  prescribed  by  this  court  or  by 
the  circuit  court  do  not  apply,  the  practice  of  the  circuit  court 
shall  be  regulated  by  the  present  practice  of  the  high  court  of 
chancery  in  England,  so  far  as  the  same  may  reasonably  be 
applied  consistently  with  the  local  circumstances  and  local  con- 
veniences of  the  district  where  the  court  is  held,  not  as  posi- 
tive rules,  but  as  furnishing  just  analogies  to  regulate  the 
practice. 

RULE  91. 

Whenever,  under  these  rules,  an  oath  is  or  may  be  required 
to  be  taken,  the  party  may,  if  conscientiously  scrupulous  of 
taking  an  oath,  in  lieu  thereof,  make  solemn  affirmation  to  the 
truth  of  the  facts  stated  by  him. 

RULE  92. 

In  suits  in  equity  for  the  foreclosure  of  mortgages  in  the 
circuit  courts  of  the  United  States,  or  in  any  court  of  the  Ter- 
ritories having  jurisdiction  of  the  same,  a  decree  may  be  ren- 
dered for  any  balance  that  may  be  found  due  to  the  complain- 
ant over  and  above  the  proceeds  of  the  sale  or  sales,  and 
execution  may  issue  for  the  collection  of  the  same,  as  is 
provided  in  the  8th  rule  of  this  court  regulating  the  equity 
practice,  where  the  decree  is  solely  for  the  payment  of  money. 

RULE  93. 

"When  an  appeal  from  a  final  decree  in  an  equity  suit,  grant- 
ing or  dissolving  an  injunction,  is  allowed  by  a  justice  or  judge 
who  took  part  in  the  decision  of  the  cause,  he  may,  in  his  dis- 
cretion, at  the  time  of  such  allowance,  make  an  order  suspending 
or  modifying  the  injunction  during  the  pendency  of  the  appeal, 
upon  such  terms  as  to  bond  or  otherwise  as  he  may  consider 
proper  for  the  security  of  the  rights  of  the  opposite  party. 

RULE  94. 

Every  bill  brought  by  one  or  more  stockholders  in  a  corpo- 
ration, against  the  corporation  and  other  parties,  founded  on 


EQUITY    RULES.  713 

rights  which  may  properly  be  asserted  by  the  corporation,  must 
be  verified  by  oath,  and  must  contain  an  allegation  that  the  plain- 
tiff was  a  shareholder  at  the  time  of  the  transaction  of  which  he 
complains,  or  that  his  share  had  devolved  on  him  since  by 
operation  of  law ;  and  that  the  suit  is  not  a  collusive  one  to 
confer  on  a  court  of  the  United  States  jurisdiction  of  a  case  of 
which  it  would  not  otherwise  have  cognizance.  It  must  also 
set  forth  with  particularity  the  efforts  of  the  plaintiff  to  secure 
such  action  as  he  desires  on  the  part  of  the  managing  directors 
or  trustees,  and,  if  necessary,  of  the  shareholders,  and  the  causes 
of  his  failure  to  obtain  such  action. 


INDEX. 


THE  REFERENCES   ARE   TO  THE   SECTIONS. 


ABANDONMENT, 

actual,  of  applications,  145. 

actual,  of  invention,  87-92. 

actual,  of  invention,  by  acquiescence  in  rejection  of  application,  92. 

actual,  of  invention,  by  disclaimer,  90. 

actual,  of  invention,  by  express  declaration,  89. 

actual,  of  invention,  by  laches,  91. 

constructive,  of  applications,  146. 

constructive,  of  application,  working  constructive  abandonment  of 

invention,  103,  147. 
constructive,  of  invention,  87,  93,  147. 
constructive,  of  invention,  after  application,  103. 
constructive,  of  invention,  must  be  negatived  in  declarations  and  bills, 

425,  579. 

constructive,  of  invention,  not  condoned  by  excuses,  104. 
evidence  of  actual,  512. 
evidence  of  constructive,  513. 
how  pleaded  in  actions  at  law,  449. 
how  pleaded  in  actions  in  equity,  602. 
of  experiments,  86. 
of  invention,  86. 

of  invention,  after  issue  of  letters  patent,  106,  107. 
of  patents,  106,  107. 
several  kinds  of,  86. 

ACCIDENT 

causing  reissuable  faults,  220. 

ACCOUNT 

of  profits,  covering  what  time,  714. 

ACCOUNTINGS 

before  masters.  739-743. 


716  INDEX. 

ACQUIESCENCE 

in  rejection  of  applications,  92. 

necessary  length  of,  as  foundation  of  right  to  preliminary  injunc- 
tions, 668,  669. 

need  not  be  universal,  in  order  to  constitute  foundation  of  right  to 
preliminary  injunctions,  670. 

public,  as  foundation  of  right  to  preliminary  injunctions,  665,  667. 

working  license,  312. 

ACTIONS 

for  infringement,  form  of,  421. 

for  infringement,  where  brought,  389,  390. 

for  infringement  not  affected  by  subsequent  disclaimers,  193. 

on  assigned  rights  of  action,  395,  435,  579. 

to  enforce  contracts  relevant  to  patents,  388. 

to  set  aside  contracts  relevant  to  patents,  388. 

ACTIONS  AT  LAW, 

declarations  in,  422-438. 

defendants  in,  401-416. 

for  assigned  rights  of  action,  395,  435. 

for  infringements  of  patents,  418. 

plaintiffs  in,  394-400. 

pleas  in,  439-477. 

practice  in,  489. 

testimony  in,  535. 

trial  of,  487. 

ACTIONS  IN  EQUITY, 

answers  in,  508-622. 

bills  in,  576-584. 

complainants  in,  394-400,  574. 

defendants  in,  401-416,  575. 

depositions  in,  638,  639. 

for  assigned  rights  of  actions,  395. 

hearings  in,  632. 

hearings  in,  before  masters,  643. 

pleas  in,  589,  590. 

rehearings  in,  645-648. 

replications  in,  623. 

trials  by  jury  in,  642. 

ADDITION 

to  composition  of  matter,  as  affecting  infringement,  369. 
to  mechanical  patent,  as  affecting  infringement,  347. 

AFFIDAVITS 

on  motions  for  new  trials,  539. 

on  motions  for  preliminary  injunctions,  662. 


INDEX.  717 

AFFIDAVITS—  Continued. 

on  motions  to  dissolve  preliminary  injunctions,  694. 
on  petitions  for  leave  to  file  bills  of  review,  652. 
on  petitions  for  rehearings,  647. 

AFFIRMATION 

made  instead  of  oath,  124. 

AGENTS 

as  defendants  in  actions  for  infringement,  403. 

AGGREGATION 

distinguished  from  combination,  32. 

AMENDMENTS 

of  applications  for  patents,  135-139. 

of  bills  in  equity,  586.  587. 

of  declarations  at  law,  483. 

of  drawings  and  models,  138,  214. 

ANSWERS 

to  bills  of  complaint,  588,  598-622. 

to  bills  in  the  nature  of  supplemental  bills,  631. 

to  supplemental  bills,  631. 

when  used  as  affidavits,  662,  694. 

ANTIQUITY  OF  PARTS 

never  negatives  novelty  of  combinations,  66. 

APPEALS 

from  examiners  to  board  of  examiners-in -chief,  132. 

from  board  of  examiners- in-chief  to  Commissioner  of  Patents,  132. 

from  Commissioner  to  Supreme  Court  of  District  of  Columbia,  182- 

134,  144. 
to  Supreme  Court  of  the  United  States,  from  circuit  courts,  144,  209, 

644,  654,  655,  691,  703. 

APPLICATIONS 

actual  abandonment  of,  145. 

amendments  of,  135-139. 

Commissioner's  decisions  upon,  148. 

constructive  abandonment  of,  146. 

dates  of,  129. 

elements  of,  109. 

examination  of,  130. 

fees  due  upon  filing,  125. 

for  letters  patent,  109. 

for  Patent  Office  extensions,  261,  266. 

for  reissues,  212-214,  250. 

how  stated  in  declarations  and  bills,  427,  579. 

may  fix  dates  of  inventions,  59,  69. 


718  INDEX. 

APPLICATIONS —  Continued. 

more  than  two  years  after  sale  or  public  use,  93. 

more  than  two  years  after  making,  99. 

never  negative  novelty,  58,  60. 

of  executors  or  administrators,  123. 

papers  forming,  when  evidence,  187. 

re-examination  of,  131. 

rejection  of,  131. 

ART 

patent-law,  meaning  of  the  word,  3. 

ASSIGNEES 

as  complainants  or  plaintiffs,  394-397. 
may  receive  letters  patent,  110,  171. 
may  receive  reissues,  212,  250,  252. 

ASSIGNMENTS 

authenticated,  how,  275. 

conflicting,  281. 

construction  of,  278. 

descriptions  in,  275. 

notice  of,  281. 

of  extensions,  280. 

of  inventions,  97,  273. 

of  licenses,  310. 

of  patents,  274. 

of  patents  under  creditors'  bills,  156. 

of  rights  of  action  for  past  infringements,  277,  281. 

pendente  lite,  699. 

recording  of,  281. 

reformation  of,  278,  279. 
ASSUMPSIT 

actions  of,  418-420. 

ATTACHMENTS  FOR  CONTEMPT 

when  issued,  and  against  whom,  708. 

BALDWIN,  JUSTICE, 

opinion  on  rights  of  persons  to  use  a  patented  process,  who  used  it 

with  the  consent  of  the  inventor  before  the  patent,  159. 
BANKRUPTCY 

conveying  title  to  patent  rights,  290. 
BARR,  JUDGE, 

opinion  on  construction  of  the  national  statute  of  limitation,  475. 
BEAUTY 

has  a  utility  of  its  own,  22,  80. 
BENEDICT,  JUDGE, 

opinion  on  a  question  of  utility,  78. 


INDEX.  719 

BILLS  IN  EQUITY, 

amendments  of,  586,  587. 

answers  to,  588. 

defences  to,  591. 

for  preliminary  injunctions,  660. 

interrogating  part  of,  581. 

introductory  part  of,  578. 

oaths  to,  584. 

original,  576. 

pleas  to,  589,  590. 

prayer  for  process  in,  582. 

prayer  for  relief  in,  580. 

signature  of  counsel  to,  583. 

stating  part  of,  579. 

to  compel  issue  of  letters  patent,  134,  144. 

to  perpetuate  testimony,  585. 

to  restrain  publications  of  statements  about  patent  controversies,  585 

when  may  be  composite,  629. 

when  may  be  used  as  affidavits,  662. 

BILLS  IN  THE  NATURE  OF  BILLS  OP  REVIEW, 
by  whom  filed,  653. 

distinguished  from  bills  of  review,  653. 
required,  when,  653. 

BILLS  IN  THE  NATURE  OP  BILLS  op  REVTVOK, 
by  whom  filed,  628. 
required,  when,  628. 
subordinate  to  original  bills,  624. 

BILLS  IN  THE  NATURE  OF  SUPPLEMENTAL  BILLS, 
leave  of  court  necessary  to  filing,  630. 
required,  when,  626. 
subordinate  to  original  bills,  624. 

BILLS  OP  REVIEW, 

by  whom  filed,  653. 

filed  subsequent  to  appeal,  652. 

sorts  of,  650. 

to  correct  errors  apparent  on  the  record  or  pleadings,  651. 

to  introduce  newly  discovered  evidence,  652. 

when  proper,  650. 

BILLS  OP  REVIVOR, 

by  whom  filed,  628. 
proceedings  upon,  627. 
subordinate  to  original  bills,  624. 
when  required,  627. 


720  INDEX. 

BILLS  OF  REVIVOR  AND  SUPPLEMENT, 
when  required,  629. 

BILLS  OF  EXCEPTIONS, 

nature  and  function  of,  551,  552. 

what  must  contain,  and  what  exclude,  551,  552. 

when  to  be  prepared  and  signed,  554. 

where  cases  are  tried  by  judge  without  jury,  540. 

BLATCHFORD,  JUSTICE, 

opinion  on  element  of  age  in  equivalents,  355,  357. 

opinion  on  decrees,  where  a  disclaimer  is  found  necessary,  209. 

opinion  on  disclaimers,  199. 

opinion  on  injunctions  in  interference  actions,  319. 

opinion  on  interest  on  profits,  737. 

opinion  on  invention,  37. 

opinion  on  respective  rights  of  patentees  and  others,  160. 

BLODGETT,  JUDGE, 

opinions  on  invention,  31,  35. 
opinion  on  subjects  of  patents,  5. 

BOND,  JUDGE, 

opinion  on  invention,  34. 

BONDS 

required  from  complainants  on  issuing  preliminary  injunctions,  688, 

696. 
required  from  defendants  in  place  of  preliminary  injunctions,  685- 

687. 
required  from  defendants,  where  permanent  injunctions  are  postponed 

till  final  decrees,  702. 
required  from  defendants,  where  permanent  injunctions  are  suspended 

pending  appeals,  703. 

BRADLEY,  JUSTICE, 

dissenting  opinion  in  Kartell  v.  Tilghman,  388. 

opinion  on  description  in  specification,  174. 

opinion  on  force  of  the  Commissioner's  decision  in  reissue  cases,  223. 

opinion  on  indistinct  claims,  455. 

opinion  on  invention,  25,  26. 

opinion  on  jurisdiction  of  circuit  courts  of  actions  against  government 

officers,  393. 
opinion  on  jurisdiction  of  the  court  of  claims,  of  actions  against  the 

government  for  infringement,  392. 

BROADENED  REISSUES, 

when  too  late  to  apply  for,  226,  227. 

BROWN,  HENRY  B.,  JUDGE, 

opinion  on  narrowed  reissues,  228. 


INDEX.  721 

BURDEN  OF  PROOF 

on  questions  of  abandonment,  108. 

on  questions  of  invention,  42. 

on  questions  of  novelty,  76. 

on  questions  of  profits,  719. 

on  questions  of  delay  in  applying  for  reissues,  523. 

on  questions  of  utility,  85. 

on  questions  of  intention  in  qui  tarn  cases,  327. 

BUTLER,  JUDGE, 

opinion  of,  on  reissues  to  clarify  descriptions,  228. 

CADWALLADER,  JUDGE, 

opinion  on  decree,  where  a  disclaimer  is  found  necessary,  209. 

CAMPBELL,  JUSTICE, 

opinion  on  attempts  to  disguise  legal  liability,  414. 

CARPENTER,  JUDGE, 

opinion  on  jurisdiction  of  Federal  Courts,  388. 

CAUSES  OF  ACTION,  « 

when  plurality  of  are  suable  in  one  action,  417. 
CAVEATS, 

their  nature  and  functions,  143. 
CAVEAT  EMPTOR, 

application  of  the  maxim,  286. 

CERTIFICATE  OF  DIVISION  OF  OPINION, 

function  and  operation  of,  657. 
CITIES, 

as  defendants  in  infringement  suits,  401. 

CITIZENSHIP 

stated  in  declarations  and  bills,  422,  423,  426,  579. 

CLAIMS, 

compound,  in  respt-ct  of  disclaimers,  199.  , 

construed  in  the  light  of  the  state  of  the  art,  184. 

defective,  218. 

excessive,  216. 

for  combinations,  198. 

for  single  devices,  in  reissues,  246. 

function  of,  176. 

functional  in  form,  183. 

how  written,  116. 

indistinct,  177. 

indistinctness  of,  how  affecting  letters  patent,  178. 

indistinctness  of,  how  pleaded  in  actions  at  law,  455. 

indistinctness  of,  how  pleaded  in  actions  in  equity,  608. 

indistinctness  of,  how  proved,  520. 


722  INDEX. 

CLAIMS—  Continued. 

in  specifications  of  compositions  of  matter,  119. 

in  specifications  of  designs,  120*. 

in  specifications  of  machines,  117. 

in  specifications  of  manufactures,  118. 

in  specifications  of  processes,  120. 

insufficient,  218. 

valid  and  void,  in  same  letters  patent  or  reissue,  177,  249. 

validity  of,  governs  validity  of  letters  patent,  177. 

CLIFFORD,  JUSTICE, 

opinion  on  element  of  age  in  equivalents,  354,  356. 

opinion  on  force  of  Commissioner's  decision  in  reissue  cases,  222. 

COLT,  JUDGE, 

opinion  on  jurisdiction  of  equity,  593. 

COMBINATION, 

claim  for,  not  to  be  broadened  by  construction,  186. 

dissolved  by  omission  of  any  one  element,  349 

distinguished  from  aggregation,  32. 

every  part  of,  conclusively  presumed  to  be  material,  349. 

of  old  devices,  having  old  mode  of  operation,  37. 

patentability  of,  26,  33. 
COMITY 

between  courts  on  questions  of  fact,  635. 

COMMISSIONER  OF  PATENTS, 

appeals  to,  from  board  of  examiners-in-chief,  132. 

appeals  from,  to  Supreme  Court  of  District  of  Columbia,  132. 

erroneous  decision  of,  when  remedied  by  reissue,  220. 

force  of  decision  of,  in  application  cases,  148. 

force  of  decision  of,  in  extension  cases,  266. 

force  of  decision  of,  in  interference  cases,  142,  318. 

force  of  decision  of,  in  reissue  cases,  221-225. 
COMMON  LAW 

confers  no  paramount  right  in  inventions,  149. 

COMPLAINANT, 

exceptions  of,  to  master's  report,  749. 
who  may  be,  in  patent  cases,  394-400,  574. 

COMPOSITIONS  OF  MATTER, 

claims  in  specifications  of,  119. 

distinguishable  from  manufactures,  19. 

patents  for,  how  infringed,  369. 

prerequisites  of  patentability  of,  18. 

specimens  of,  128. 

subjects  of  patents,  1. 

the  various  classes  of,  in  respect  of  infringement,  374. 


INDEX.  72JJ 

COMPROMISE 

money  paid  in,  no  criterion  of  damages,  559. 

CONFORMITY  ACT, 

Federal,  relevant  to  practice,  421. 

CONGRESS, 

power  of,  to  promote  progress  of  science  and  useful  arts,  1 

CONSIDERATION, 

partial  or  total  failure  to  pay,  for  assignment,  276. 

CONSTITUTION  OP  THE  UNITED  STATES, 

foundation  of  United  States  patents,  1,150. 

e 

CONSTRUCTION 

of  assignments,  278. 
of  claims,  functional,  183. 
of  claims  in  the  light  of  the  state  of  the  art,  184. 
of  claims  narrowly,  when  necessary  to  save  their  validity,  185. 
of  letters  patent,  181. 

of  letters  patent  according  to  contemporaneous  laws,  188. 
of  letters  patent  after  disclaimer,  207. 

of  letters  patent  in  light  of  contemporaneous  construction  of  the  in- 
ventor, 187. 

of  letters  patent  in  the  light  of  expert  testimony,  189,  500. 
of  letters  patent  on  motions  for  preliminary  injunctions,  678. 
of  letters  patent,  question  of  law,  189. 
of  letters  patent  with  proper  liberality,  185. 
of  letters  patent  with  proper  strictness,  186. 
of  licenses,  306. 
of  reissues,  248. 
of  title  papers  on  motions  for  preliminary  injunctions,  675, 

CONTEMPT  OF  COURT, 

how  punished,  710. 

CONTRIBUTION 

between  joint  infringers,  531. 

CORPORATIONS 

as  defendants  in  patent  cases,  401,  409. 

assignments  of  patents  to,  275. 

consolidated,  as  defendants,  416. 

consolidated,  succeeding  to  patent  rights  of  their  constituents,  285, 

consolidated,  invoking  licenses  given  to  their  constituents,  810. 

dissolution  of,  pendente  lite,  700. 

how  mentioned  in  declarations  and  bills,  422,  578. 

where  suable  for  infringements  of  patents,  889. 


INDEX. 

COSTS 

in  cases  of  disclaimer,  205,  208. 

in  cases  of  new  trials,  539. 

in  favor  of  whom  recoverable,  543,  545. 

may  include  what,  544-549. 

on  amendment  of  bills,  586. 

taxed  how,  544-549. 

where  equity  refuses  to  take  jurisdiction,  594. 

COUNTIES, 

as  defendants  in  infringement  suits,  401. 
COURTS, 

circuit,  bills  in,  to  compel  issue  of  letters  patent,  134. 

circuit,  jurisdiction  of,  over  patent  actions  against  government  agents, 

393. 

circuit,  titles  of,  422. 

comity  between,  on  questions  of  fact,  635. 
having  original  jurisdiction  in  actions  for  infringement,  379. 
having  jurisdiction  in  qui  tarn  actions,  331. 
having  jurisdiction  to  grant  injunctions,  658. 
having  jurisdiction  to  repeal  patents,  323. 
titles  of,  in  bills  of  complaint,  577. 

COURT  OF  CLAIMS, 

jurisdiction  of,  in  certain  patent  cases,  391,  392. 

CREDITORS'  BILLS, 

patent  rights  subject  to,  156. 
titles  transferred  by,  289. 

CROSS  APPEALS 

to  Supreme  Court,  655. 

CROSS  BILLS 

not  required  in  interference  actions,  316. 

CURTIS,  JUSTICE, 

opinion  on  invention,  33. 

opinion  on  mode  of  operation,  346. 
DAMAGES 

accruing  before  surrender  and  reissue,  231. 

actual,  not  lessened  by  ignorance  of  patent,  569. 

decrees  for,  573. 

evidences  of,  502,  565,  636. 

excessive  assessment  of,  how  remedied,  539. 

exemplary,  567. 

for  infringement  by  making,  564. 

generic  measure  of,  555. 

how  stated  in  declarations,  436. 

include  no  counsel  fees  or  other  expenses  of  litigation,  570. 


INDEX.  725 

DAMAGES — Continued. 

increased,  568. 

interest  on,  571. 

jurisdiction  of  equity,  to  assess,  578. 

measures  of,  555-563. 

no  measure  of  profits,  716. 

not  measured  by  what,  559,  560. 

remote  consequential,  566. 

resulting  to  defendants  from  improper  injunctions,  696. 

when  measured  by  royalties,  562. 
DANIEL,  JUSTICE, 

opinion  on  patents,  153. 
DATES, 

of  applications,  how  proved,  129. 

of  invention,  the  only  issue  in  interference  actions,  317. 

of  patented  inventions,  how  fixed  and  how  proved,  60,  69,  70,  510. 

of  unpatented  inventions,  when  fixed  by  aid  of  abandoned  applica- 
tions, 59. 

DECLARATIONS, 

commencement  of,  422. 
conclusion  of,  437. 

degree  of  correctness  required  in,  438. 
in  trespass  on  the  case,  422-438. 
statement  of  right  of  action  in,  423-436. 
title  of  court  in,  422. 
title  of  term  in,  422. 
venue  in,  422. 

when  demurrable  in  patent  actions,  483. 
DECREES, 

action  of  Supreme  Court  upon,  656. 

appeals  from,  654. 

by  consent  of  defendants  when  injunction  is  based  on,  709. 

consent,  when  foundation  of  preliminary  injunctions  against  third 

parties,  672. 

final,  when  entered,  649. 
for  pecuniary  recoveries,  573. 
how  assailable  in  the  Supreme  Court,  655. 
in  interference  actions,  820. 
interlocutory,  644. 

interlocutory,  not  pleadable  as  retjudieata,  468. 
interlocutory,  when  including  orders  for  permanent  injunctions,  697. 
performance  of,  before  filing  bills  of  review,  650. 
pro  eonfesso,  pleadable  as  res  judicata,  468- 

pro  eonfesso,  when  foundation  of  right  to  preliminary  injunctions,  671. 
reversal  of,  by  Supreme  Court,  resulting  in  dismissal  of  bill,  704. 
where  disclaimers  are  found  necessary,  209. 


726  INDEX. 

DEFECTIVE, 

meaning  of  the  word,  in  the  law  of  reissues,  217. 

DEFENCES 

based  on  expiration  of  patent,  441. 

based  on  omission  to  mark  "  patented,"  441. 

based  on  repeal  of  patent,  441. 

in  respect  of  their  classification,  441. 

in  respect  of  special  pleading,  442. 

laches,  how  set  up,  597. 

the  twenty -seven,  440,  591. 

those  pleadable  by  the  general  issue,  with  notice  of  special  matter, 

443. 

to  bills  in  equity,  588. 

to  bills  in  the  nature  of  supplemental  bills,  631. 
to  motions  for  preliminary  injunctions,  677-684. 
to  supplemental  bills,  631. 
where  licensee  is  sued  as  infringer,  309. 
which  assail  extensions,  441. 
which  assail  reissues,  441. 
which  deny  validity,  441. 

DEFENDANTS, 

costs  recoverable  by,  543. 

death  of,  pendente  lite,  700. 

evidence  in  chief,  503-534. 

doings  of,  how  proved  by  plaintiffs,  497. 

in  actions  at  law,  401-416. 

in  actions  in  equity,  401-416,  575. 

in  patent  actions  generally,  401-416. 

where  suable  for  infringement,  389,  390. 

DEMURRERS  IN  ACTIONS  AT  LAW, 
function  of,  482. 
joinder  in,  486. 
to  declarations,  482,  483. 
to  pleas,  482,  484. 
to  replications,  482,  485. 
to  rejoinders,  482. 

DEMURRERS  IN  ACTIONS  IN  EQUITY 
setting  up  laches,  597. 
setting  up  non- jurisdiction  of  equity,  594. 
sustaining  to  bills,  649. 

take  precedence  of  motions  for  preliminary  injunctions,  663. 
to  bills,  588. 

to  bills  in  the  nature  of  supplemental  bills,  631. 
to  supplemental  bills,  631. 


INDEX.  727 

DEPOSITIONS, 

in  actions  at  law,  535. 

in  actions  in  equity,  639. 

used  in  cases  other  than  those  in  which  taken,  640. 

DESCRIPTIONS, 

defective,  218. 

errors  in,  175. 

excess  of,  175. 

fullness  of,  174. 

in  general,  111,  115. 

insufficient,  218. 

need  not  be  changed  in  cases  of  disclaimer,  207. 

vague,  how  affecting  letters  patent,  178. 

DESIGNS, 

claims  for,  120*. 

novelty  of,  64. 

on  whose  invention  patentable,  21. 

subjects  of  patents,  20. 

utility  of,  22. 

DESIGN  PATENTS, 

duration  of,  162. 

fees  for,  125. 

how  infringed,  375. 

DESTRUCTION, 

of  infringing  articles,  644. 

DIFFERENCE, 

what  degree  of,  inconsistent  with  negation  of  novelty,  57. 

DILLON,  JUDGE, 

opinion  on  construction  of  the  national  statute  of  limitation,  475. 

DIRECTORS, 

of  corporations  as  defendants,  410,  411,  414,  415 

DISCLAIMERS, 

as  documents,  193. 

based  on  mistakes  of  fact,  195. 

based  on  mistakes  of  law,  196. 

causes  of  necessity  for,  193. 

costs  in  cases  of,  205. 

decrees,  in  cases  of  necessity  for,  209. 

delay  to  file,  when  beginning,  204. 

effect  of,  on  pending  actions,  193. 

errors  which  justify,  194. 

errors  which  do  not  justify,  197. 

filed  by  part  owner,  206. 


728  INDEX. 

DISCLAIMERS— Continued. 

filed  pending  suit,  208. 

function  of,  197. 

how  affected  by  fraudulent  or  deceptive  intention,  202. 

how  stated  in  declarations,  430. 

in  respect  of  combination  claims,  198. 

in  respect  of  compound  claims,  199. 

in  respect  of  immaterial  claims,  200. 

letters  patent,  how  construed  after,  207. 

need  not  change  description,  207. 

of  equivalents,  372. 

of  reissue  claims,  201. 

right  of  appeal  on,  necessity  for,  209. 

statements  in,  206. 

statutory  authorization  of,  192. 

subjects  of,  not  reclaimable  by  reissue  or  otherwise,  209,  241. 

unreasonable  delay  to  file,  203,  208. 

unreasonable  delay  to  file,  how  pleaded  in  actions  at  law,  456. 

unreasonable  delay  to  file,  how  pleaded  in  actions  in  equity,  609. 

unreasonable  delay  to  file,  how  proved,  521. 

working  abandonment  of  invention,  90. 

DISCOVERY, 

patent-law  meaning  of  the  word,  2. 

DISTRICTS,  ., 

wherein  defendants  may  be  sued,  389. 

DIVISION  OP  OPINION, 
certificate  of,  657. 

DOUBLE  USE, 

not  invention,  38. 

DRAWINGS,  * 

amendment  of,  138,  214. 

constitute  part  of  letters  patent,  172. 

description  of,  in  specification,  111,  114. 

in  prior  patents  or  printed  publications,  56. 

may  aid  construction  of  claims,  182. 

may  constitute  birth  of  subsequently  patented  invention,  70. 

unpublished,  never  negative  novelty,  61. 

what  must  show,  126. 

when  required,  126. 

DUE  PROCESS  OF  LAW, 

meaning  of  the  phrase,  151. 
statutes  are  not,  158. 

EMPLOYERS, 

as  defendants,  404. 


INDEX.  729 


EMPLOYES, 

as  defendants,  403. 


EQUITY, 

hearings  in,  632. 

jurisdiction  of,  in  infringement  cases,  572,  592,  593. 
jurisdiction  of,  in  infringement  cases,  not  dependent  on  prior  adjudi- 
cation at  law,  595. 

jurisdiction  of,  over  interfering  patents, 
jurisdiction  of,  to  repeal  patents,  322. 
laches  a  defence  in,  591,  596. 
non  jurisdiction  of,  591,  592. 
non-jurisdiction  of,  how  set  up,  594. 
profits  recoverable  in,  711. 

EQUIVALENTS, 

among  ingredients  of  compositions  of  matter,  370. 
among  elements  of  processes,  338. 
denned,  358. 
disclaimed,  372. 
element  of  age  in,  354-358. 
inquired  into,  351. 
meaning  of  the  word,  352-358. 
substitution  of,  not  invention,  36. 
tests  of,  362. 

where  claimable  in  reissues,  when  not  described  or  claimed  in  orig- 
inals, 247. 

ERRORS. 

of  judge  or  jury,  when  ground  for  new  trial,  539. 

ESTATES, 

in  patent  rights,  274.  - 

ESTOPPEL, 

by  matter  of  deed,  469. 

by  matter  in  pats,  313. 

by  matter  of  record,  468. 

classes  of,  467. 

conveying  title,  275. 

elements  of,  813. 

in  actions  at  law,  440,  467. 

in  actions  in  equity,  591,  621. 

in  interferences,  141. 

on  motions  for  preliminary  injunctions,  683. 

pleaded  how,  in  actions  at  law,  470. 

pleaded  how,  in  actions  in  equity,  621. 

proved  how,  533. 

working  implied  license,  318. 


730  INDEX. 

EVICTION, 

of  licensees,  307. 

EVIDENCE, 

before  masters,  740,  741. 

complainant's,  in  chief,  636. 

defendant's,  in  chief,  503-534. 

documentary,  in  equity  cases,  641. 

how  far  to  be  set  forth  in  bills  of  exceptions,  551,  552. 

in  disproof  of  infringement,  when  unnecessary,  532. 

in  equity  cases,  637. 

in  interference  actions,  318. 

newly  discovered,  when  ground  for  new  trial,  539. 

newly  discovered,  when  ground  for  rehearing,  647. 

newly  discovered,  when  ground  for  bill  of  review,  652. 

objections  to,  before  masters,  741. 

objections  to,  for  want  of  pleading,  600. 

objections  to,  when  to  be  made,  535. 

of  absence  of  inadvertence,  accident,  and  mistake,  522. 

of  actual  abandonment,  512. 

of  constructive  abandonment,  513. 

of  damages,  502,  565. 

of  deceitfully  lacking  or  excessive  specification,  518. 

of  estoppel,  533. 

of  experts,  498. 

of  expiration  of  patent  before  end  of  apparent  term,  527. 

of  facts  to  sustain  defence  in  Miller  v.  Brass  Co.,  523. 

of  infringement,  497-501. 

of  joint  invention  for  sole  patent,  516. 

of  lack  of  identity  between  application  and  letters  patent,  514. 

of  lack  of  identity  between  letters  patent  and  reissue,  459,  524. 

of  lack  of  statutory  application  for  extension,  525. 

of  licenses,  530. 

of  non-infringement,  532. 

of  not  being  a  proper  subject  of  a  patent,  504. 

of  omission  to  mark  "  patented,"  528. 

of  prior  knowledge  or  use,  508. 

of  prior  patents,  506. 

of  prior  printed  publications,  507. 

of  profits,  636,  740. 

of  release,  531. 

of  repeal  of  patent,  526. 

of  res  judicata,  533. 

of  sole  invention  for  joint  patent,  517. 

of  surreptitious  or  unjust  obtaining  of  patent,  515. 

of  unreasonable  delay  to  file  disclaimer,  521. 

of  want  of  invention,  505. 


INDEX.  731 

EVIDENCE  —  Continued. 

of  want  of  novelty,  506-510. 

of  want  of  title,  529. 

of  want  of  utility,  511. 

plaintiff's,  in  chief,  491. 

rules  of,  in  interferences,  141. 

rules  of,  in  patent  actions.  490. 

that  claims  are  indistinct,  530. 

that  specification  is  insufficient,  519. 

to  rebut  defence  of  laches,  636. 

to  rebut  defence  of  want  of  novelty,  509,  510. 

to  support  defence  of  laches,  637. 

to  support  plea  of  statute  of  limitation,  534. 

EXAMINATION, 

of  applications,  130. 

EXAMINERS-IN-CHIEF, 

appeals  to  board  of,  132. 

EXCEPTIONS, 

to  instructions,  and  to  refusals  to  instruct,  553,  554. 

EXECUTORS  AND  ADMINISTRATORS, 

applying  for  letters  patent,  110,  171. 

applying  for  Patent-Office  extensions,  261. 

applying  for  reissues,  250. 

as  plaintiffs  or  complainants,  396. 

filing  disclaimers,  206. 

oath  of,  to  applications,  123. 

reissue  granted  to  one  of  several,  251. 

EXPERIMENTAL  USE, 

distinguished  from  "  public  use,"  95. 

EXPERTS, 

cross-examination  of,  501. 

hypothetical  questions  put  to,  499. 

testimony  of,  affecting  construction  of  letters  patent,  189,  500. 

testimony  of.  on  motions  for  preliminary  injunctions,  676. 

testimony  of,  regarding  the  state  of  the  art,  500. 

testimony  of,  rebvant  to  infringement,  498. 

testimony  of,  relevant  to  non-infringement,  532. 

EXPIRATION  OF  PATENT, 

how  pleaded  in  actions  at  law,  462. 
how  pleaded  in  actions  in  equity,  615. 
how  proved,  527. 

EXTENSIONS, 

application  for  Patent-Office  extension,  261. 


732  INDEX. 

EXTENSIONS —  Continued. 

assignability  of  inchoate  right  to  Patent-Office  extension,  273. 

ignment  of,  280. 

constitutional  foundation  of,  255. 
congressional,  256. 
congressional,  how  effected,  257. 
congressional,  whom  for  benefit  of,  258. 
facts  justifying  Patent-Office  extension,  267. 
fraud  in  procuring  or  granting  Patent-Office  extension,  269. 
how  stated  in  declarations,  431. 
lack  of  statutory  application  for  Patent-Office  extension,  how  pleaded 

in  actions  at  law,  460. 
lack  of  statutory  application  for  Patent-Office  extension,  how  pleaded 

in  actions  in  equity,  613. 
lack  of  statutory  application  for  Patent-Office  extension,  how  proved, 

525. 

Patent-Office  extensions,  259. 
Patent-Office  extensions,  applications  for,  261. 
Patent-Office  extensions,  certified  how,  265. 
Patent-Office  extensions,  grantable  when,  262,  264. 
Patent  Office  extensions,  inventors'  rights  therein,  263. 
Patent-Office  extensions,  operation  of,  on  existing  specimens  of  the 

invention,  270,  271. 

Patent-Office  extensions,  proceeding  on  applications  for,  268. 
Patent-Office  extensions,  repeal  of,  269. 
Patent-Office  extensions,  statutory  foundation  of,  260. 
Patent-Office  extensions,  evidence  of  validity  of,  493. 

FAULTS, 

which  cause  patents  to  be  reissuable,  218. 

FEES, 

attorney's  docket,  taxable  as  costs,  545. 
clerks',  taxable  as  costs,  546. 
commissioners',  taxable  as  costs,  547. 
final  Patent-Office,  103,  125. 
witness,  taxable  as  costs,  548. 

FIELD,  JUSTICE, 

opinion  on  force  of  commissioner's  decision  in  reissue  cases,  223. 
opinion  on  jurisdiction  of  State  courts,  385. 

FIFTH  AMENDMENT, 

to  Constitution  of  United  States,  151,  158. 

FINDING, 

of  judge,  when  trying  action  at  law  without  a  jury,  540. 

FOR  THE  PURPOSES  SET  FORTH, 
nature  of  the  phrase,  182. 


INDEX.  733 

FOREIGN  COUNTRY, 

knowledge  or  use  in,  prior  to  patentee's  invention,  54. 
public  use  or  sale  in,  more  than  two  years  prior  to  patentee's  appli- 
cation, 101. 

FOREIGN  PATENTS, 

mentioned  in  preamble  to  specification,  111. 
operation  on  novelty,  55. 

FORFEITURE, 

not  favored  in  the  law,  108. 
of  licenses,  308,  309. 

FORM, 

as  affecting  questions  of  infringement,  363-368. 
as  affecting  questions  of  invention,  41. 

FRAUD, 

in  granting  or  procuring  letters  patent,  321. 
in  granting  or  procuring  Patent-Office  extensions,  269. 
in  granting  or  procuring  reissues,  222. 

remedy  for,  in  granting  or  procuring  letters  patent,  extensions,  or  re- 
issues, 321-323. 

FUNCTIONS, 

considered  in  respect  of  equivalents,  352. 

good,  in  wrong  places,  84. 

not  subjects  of  patents,  4. 

performed  in  "  substantially  the  same  way,"  353. 

thought  by  some  to  be  good,  and  by  others  to  be  evil,  83. 

which  sometimes  work  good,  and  sometimes  evil,  82. 

GOVERNMENT  OF  THE  UNITED  STATES, 

has  no  special  rights  to  patented  inventions,  157. 

GRANTS, 

of  rights  under  letters  patent,  287. 
operation  of,  extra  territorially,  288. 

G  RANTEES, 

joining  in  actions  for  infringement,  899. 
need  not  join  in  surrender  and  reissue,  252. 
rights  of,  under  reissues,  253. 

GKIER,  JUSTICE, 

opinion  on  force  of  commissioner's  decision  in  reissue  cases,  223. 
opinion  on  mode  of  operation,  344. 
opinion  on  oath  to  application,  123. 
opinion  on  subjects  of  patents,  17. 

HAT,I,,  JUDGE, 

opinion  on  abandonment  of  patents,  107. 
opinion  on  witness  fees  taxable  as  costs,  548. 


734  INDEX 

HAMILTON,  ALEXANDER, 

opinion  on  jurisdiction  of  State  courts,  381. 

HAHLAN,  JUSTICE, 

opinion  on  construction  of  the  national  statute  of  limitation,  475 

HEARING, 

final,  633. 

interlocutory,  633. 

of  motions  for  preliminary  injunctions,  662. 

HUGHES,  JUDGE, 

opinion  on  actions  of  assumpsit  for  infringement  of  patents,  419. 
opinion  on  construction  of  the  national  statute  of  limitation,  475. 

HUNT,  JUSTICE, 

opinion  on  bill  seeking  a  decree  of  non-infringement,  585. 

IDENTITY, 

degree  of,  involved  in  constructive  abandonment,  98. 

lack  of,  between  application  and  letters  patent,  how  pleaded  in  actions 

at  law,  450. 
lack  of,  between  application  and  letters  patent,  how  pleaded  in  actions 

in  equity,  603. 

lack  of,  between  application  and  letters  patent,  how  proved,  514. 
lack  of,  between  letters  patent  and  reissue,  how  pleaded  in  actions  at 

law,  459. 
lack  of,  between  letters  patent  and  reissue,  how  pleaded  in  actions 

in  equity,  612. 
lack  of,  between  letters  patent  and  reissue,  how  proved,  524. 

IGNORANCE, 

of  anticipating  matter  never  averts  negation  of  novelty,  73. 
of  letters  patent  never  averts  judgment  or  decree  for  infringement, 
377,  569. 

INADVERTENCE, 

causing  reissuable  faults,  220. 

INADVERTENCE,  ACCIDENT,  AND  MISTAKE, 
absence  of,  how  proved,  522. 

IMPROVEMENT, 

a  subject  of  a  patent,  1. 

may  or  may  not  be  invention,  16. 

sorts  of,  16. 

INFRINGEMENT, 

absence  of,  how  proved,  532. 

beyond  the  jurisdiction  of  the  court,  676. 

by  making,  damages  for,  564. 

by  making  and  selling,  damages  for,  561. 


INDEX.  735 

INFRINGEMENT—  Con  tinned. 

by  making  and  selling,  profits  derived  from,  717-723,  786. 

by  making  and  using,  damages  for,  561. 

by  selling,  damages  for,  563. 

by  selling,  profits  derived  from,  724. 

by  using,  damages  for,  561. 

by  using,  profits  derived  from,  725-734. 

by  making,  by  using,  and  by  selling,  suable  in  one  action,  417. 

cessation  of,  no  defence  to  a  motion  for  a  preliminary  injunction, 
676,  701. 

committed  in  the  Northern  District  of  New  York,  not  suable  in 
Southern  District  of  that  State,  390. 

denial  of,  how  pleaded  in  actions  at  law,  466. 

denial  of,  how  pleaded  in  actions  in  equity,  620. 

different  sorts  of,  how  treated  by  masters,  743. 

doubtful  questions  of,  not  decided  on  motions  for  attachment,  708. 

extent  of,  ascertained  by  masters,  742. 

how  stated  in  bills  of  complaint,  579. 

how  stated  in  declarations,  434,  435. 

ignorance  no  excuse  for,  377. 

of  design  patents,  375. 

of  patents  for  compositions  of  matter,  369-872. 

of  patents,  involves  infringement  of  claims,  839. 

of  process  patents,  335-838. 

of  primary  patents,  360,  362. 

of  secondary  patents,  361 ,  362. 

of  two  or  more  terms  of  a  patent,  suable  in  one  action,  417. 

option  to  sue  for  infringement  or  for  royalty,  809. 

partly  unprofitable,  713. 

plaintiff's  evidence  of,  497-501. 

proof  of,  or  of  danger  of,  on  motions  for  preliminary  injunctions,  676. 

questions  of,  as  affected  by  addition.  847. 

questions  of,  as  affected  by  change  of  form,  863-868. 

questions  of,  as  affected  by  mode  of  operation,  841-846. 

questions  of,  as  affected  by  omission,  849. 

questions  of,  as  affected  by  rearrangement  of  parts,  848. 

questions  of,  as  affected  by  results,  840. 

questions  of,  as  affected  by  substitution  of  parts,  850. 

questions  of,  as  affected  by  utility,  876. 

questions  of,  not  to  be  taken  to  Supreme  Court  on  certificates  of  di- 
vision of  opinion,  657. 

repeated,  suable  on,  in  one  action,  485. 

INJUNCTIONS, 

acquiescence  of  the  public  as  foundation  for  preliminary,  667-4J70. 
against  corporations,  upon  what  persons  binding,  708. 
averted  by  proof  of  estoppel,  688. 


736  INDEX. 

INJUNCTIONS  —  Continued,. 

averted  by  proof  of  expiration  or  repeal  of  patent,  681. 

averted  by  proof  of  laches,  684. 

averted  by  proof  of  license,  682. 

averted  by  proof  that  patent  is  void,  679,  680. 

bills  for,  660. 

bonds  pending  motions  for  preliminary,  663. 

consent  decree,  when  foundation  for  preliminary,  672,  709. 

decree  pro  wnfesso  as  a  foundation  for  preliminary,  671. 

defences  to  preliminary,  when  set  up  in  answer,  694. 

defendant's  admission  of  validity,  when  foundation  for  preliminary, 
673. 

description  in  preliminary,  702. 

dissolution  of  permanent,  704. 

dissolution  of  preliminary,  659. 

duration  of,  in  general,  706. 

duration  of,  when  granted  by  district  judge  in  vacation,  707. 

foundation  of  right  to  preliminary,  665. 

hearing  of  motions  for  preliminary,  662. 

imperative  character  of  right  to  preliminary,  685. 

interference  decision,  when  foundation  for  preliminary,  674. 

jurisdiction  to  grant,  658. 

motions  for  preliminary,  662. 

motions  to  dissolve  preliminary,  692-694. 

motions  to  reinstate  dissolved  preliminary,  695. 

motions  to  dissolve  reinstated  preliminary,  695. 

motions  for  attachment  for  violation  of,  708,  709. 

not  averted  by  cessation  of  infringement,  701. 

not  averted  by  existence  of  remedy  at  law,  689. 

not  granted  on  trivial  infringements,  705. 

not  granted  to  restrain  complainants  from  suing  third  parties,  705. 

not  granted  to  restrain  issue  of  letters  patent,  134. 

notice  of  motions  for  preliminary,  661. 

obedience  to,  insisted  upon,  696. 

on  bills  in  interference  actions,  319. 

penalty  for  disobeying,  710. 

permanent,  when  granted,  697. 

permanent,  when  postponed,  702. 

permanent,  when  refused,  698-700. 

permanent,  when  suspended  pending  appeal,  654,  703. 

preliminary,  659. 

preliminary,  when  averted  by  proof  that  acquiescence  was  collusive, 
680. 

preliminary,  when  based  on  prior  adjudications,  666. 

proof  of  complainant's  title  a  necessary  element  in  right  to,  675. 

proof  of  infringement,  or  danger  of  infringement,  a  necessary  ele- 
ment in  right  to,  676. 


INDEX.  737 

INJUNCTIONS—  Continued. 

suspension  of,  pending  appeal,  654,  70S. 

suspension  of  motions  for  preliminary,  663. 

temporary  restraining  order  pending  motion  for  preliminary,  664. 

to  restrain  actions  at  law,  705. 

to  restrain  unauthorized  marking  of  patented  articles,  333. 

to  restrain  wrongful  declarations  of  forfeiture  of  licenses,  308. 

violations  of,  how  punished,  710. 

void  when  granted  without  jurisdiction,  696. 

when  granted  after  expiration  of  patent,  698. 

when  granted  pro  confesso,  690. 

writ  of,  708. 

INOPEBATIVENE  ss, 

a  cause  of  reissuability,  216,  218,  219. 

INSTRUCTIONS, 

exceptions  to,  553,  554. 
how  reviewed,  552. 
to  be  given  in  writing,  537. 
what  must  embody,  537. 

INSUFFICIENT, 

meaning  of  the  word  in  the  law  of  reissues,  217. 

INTEREST, 

on  damages,  571. 
on  profits,  736-738. 

INTERFERENCES, 
defined,  140. 
number  of  possible,  141. 
when  decision  in,  is  foundation  for  preliminary  injunctions,  674 

INTERFERENCE  ACTIONS  IN  EQUITY, 
authorized,  816. 
issues  in,  317. 
evidence  in,  318. 
decrees  in,  320. 

INTERFERING  PATENTS, 
causes  of,  315. 
defined,  315. 

INVALIDITY, 

when  a  cause  of  reissuability,  216. 

INVENTION, 

absent  from  mere  aggregation,  32. 
absent  from  mere  change  in  degree,  81. 
absent  from  mere  duplication,  84. 


738  INDEX. 

INVENTION—  Continued. 

absent  from  mere  enlargement,  80. 

absent  from  mere  improvement  in  workmanship,  27. 

absent  from  mere  omission  of  parts,  85. 

absent  from  mere  substitution  of  equivalents,  36. 

absent  from  mere  substitution  of  superior  materials,  28. 

absent  from  new  combination  of  old  devices  having  no  new  mode  of 

operation,  37. 

absent  from  new  use  of  old  process  or  thing,  88. 
absent  from  product  of  mere  mechanical  skill,  25. 
evidence  of  want  of,  505. 
form  no  criterion  of,  41. 
necessary  to  patentability,  23. 
questions  of  presence  or  absence  of,  are  determined  by  negative 

rules,  24. 

questions  of  presence  or  absence  of,  are  questions  of  fact,  42. 
questions  of  presence  or  absence  of,  are  sometimes  affected  by  the 

state  of  the  art,  43. 
questions  of  presence  or  absence  of,  are  sometimes  determined  by 

comparative  utility,  40. 
want  of,  how  pleaded,  in  actions  at  law,  446. 
want  of,  how  pleaded  in  actions  in  equity,  599. 
want  of,  how  proved,  505. 

JOINT  INFRINGEMENT, 

facts  which  constitute,  407. 
profits  recoverable  in  cases  of,  712. 

JOINT  INFRINGERS, 

as  defendants,  406. 
contribution  between,  631. 
releases  to  one  of  several,  531. 

JOINT  INTENTION, 

distinguished  from  sole  invention,  45,  46. 
distinguished  from  suggestions  to  sole  inventor,  47. 
for  sole  patent,  how  pleaded  in  actions  at  law,  452. 
for  sole  patent,  how  pleaded  in  actions  in  equity,  605. 
for  sole  patent,  how  proved,  516. 
for  sole  patent,  voids  the  patent,  50. 

JOINT  PATENT, 

for  sole  invention,  how  pleaded  in  actions  at  law,  452. 
for  sole  invention,  how  pleaded  in  actions  in  equity,  605. 
for  sole  invention,  how  proved,  517. 
for  sole  invention,  voids  the  patent,  51. 

JOINT  TENANCY, 

how  severed,  if  it  exists,  293. 


INDEX.  739 

JUDGES, 

directing  juries  to  find  verdict*  for  defendants,  536. 
trying  actions  at  law  without  juries,  540. 

JUDICIAL  LEGISLATION, 
so  called,  634. 

JUDICIAL  NOTICE, 

in  respect  of  pleadings,  445. 

when  taking  the  place  of  evidence,  505,  599. 

JUDGMENTS, 

by  default  pleadable  as  ret  judicata,  468. 

for  amount  larger  than  verdict,  finding,  or  report,  542. 

when  and  how  entered,  542. 

JUNIOR  PATENT, 

conformity  to,  of  defendant's  doings,  relevant  to  motions  for  prelimi- 
nary injunctions,  687. 

conformity  to,  of  defendant's  doings,  relevant  to  trial  of  issue  of  in- 
fringement in  action  at  law,  532. 

JURISDICTION, 

consent  of  parties  cannot  confer,  390. 

in  interference  actions,  316. 

in  qui  tarn  actions,  331. 

of  Commissioner  of  Patents,  to  issue  letters  patent,  148,  178. 

of  Commissioner  of  Patents,  to  grant  extensions,  266. 

of  Commissioner  of  Patents,  to  grant  reissues,  211-225. 

of  Circuit  Courts  over  actions  for  infringement  against  agents  of  the 

United  States  government,  393. 
of  Court  of  Claims  in  patent  cases,  391,  392. 
of  courts  of  first  resort  in  patent  cases,  879. 
of  equity  in  patent  cases,  572,  573,  592,  593,  658,  689. 
of  individual  Federal  courts  of  first  resort  in  patent  cases,  889. 
of  State  courts  to  enforce  or  set  aside  contracts  relevant  to  patents, 

388. 

original  in  patent  cases,  379. 
question  of  jurisdiction  of  State  courts  in  Infringement  cases,  380- 

887. 
JURIES, 

instructions  to,  537. 

when  directed  to  find  a  verdict  for  defendants,  536. 

JURY  TRIALS, 

in  actions  at  law,  488. 
in  actions  in  equity,  632. 

KENT,  CHANCELLOR, 

opinion  on  interest  on  profits,  788. 
opinion  on  jurisdiction  of  State  courts,  384. 


74:0  INDEX. 

KNOWLEDGE, 

fund  of,  required  by  inventors,  48. 

in  foreign  country,  54 

inventor  presumed  to  have,  of  state  of  the  art,  43. 

lack  of,  of  anticipating  matter,  on  tli£  part  of  patentees,  73. 

necessary  to  acquiescence,  312. 

of  patent,  not  necessary  to  constitute  infringement,  377. 

public,  works  no  constructive  abandonment,  100. 

what  must  include,  in  order  to  negative  novelty,  72. 

LACHES, 

a  defence  in  equity,  591,  596. 

a  defence  to  a  motion  for  a  preliminary  injunction,  684. 

defence  of,  how  guarded  against,  597. 

how  set  up  as  a  defence,  597. 

working  abandonment  of  application  and  invention,  145. 

working  abandonment  of  invention,  91. 

LAPSE  of  TIME, 

before  applying  for  broadened  reissue,  326,  227. 
before  applying  for  reissue  not  broadened,  228. 

LAW, 

sources  of,  537,  634. 

LAW  OF  THE  CIRCUIT, 

meaning  of  the  phrase,  634. 

LAWS  OF  NATURE 

not  subjects  of  patents,  2. 

LEAVITT,  JUDGE, 

opinion  on  force  of  Commissioner's  decision  in  reissue  cases,  223. 
opinion  on  witness  fees  taxable  as  costs,  548. 

LESSORS, 

of  infringing  machines,  as  defendants,  405. 

LETTERS  PATENT, 

apparently  in  force,  prima  facie  evidence  that  they  have  not  expired 

or  been  repealed,  494. 
as  documents,  172. 
bill  in  equity  to  compel  issue  of,  134. 
claims  of,  176,  177. 
constituents  of,  172. 
construction  of,  181. 
construction  of,  a  question  of  law,  189. 
constructive  notice  to  all  persons,  191. 
construed  according  to  contemporaneous  statutes,  188. 
construed  in  light  of  contemporaneous  construction  of  inventor,  187. 
construed  in  light  of  expert  testimony,  189. 


INDEX.  741 

LETTERS  PATENT—  Continued. 

construed  in  light  of  the  state  of  the  art,  184. 

construed  with  proper  liberality,  185. 

construed  with  proper  strictness.  186. 

description  in,  affecting  constructions  of  claims,  182. 

duration  of.  162,  163. 

errors  in,  when  fatal  to  validity  of,  172. 

extent  of,  160,  161. 

granted  to  whom,  110,  171. 

how  affected  by  vague  description  or  claims,  178. 

how  construed  after  disclaimer,  207. 

how  set  out  in  declarations,  428. 

matters  of  public  record,  191. 

nature  of,  151-157. 

presumed  to  be  for  same  invention  as  application,  190. 

primafade  evidence  of  their  own  validity,  491. 

separate,  granted  for  different  parts  of  one  machine,  180. 

signed  by  whom,  172. 

surrender  of,  105. 

surreptitious  or  unjust  obtaining  of,  how  pleaded  in  actions  at  law, 

451. 
surreptitious  or  unjust  obtaining  of,  how  pleaded  in  actions  in  equity, 

604. 

the  description  in,  174,  175. 

valid  as  to  one  or  more  claims  while  void  as  to  the  residue,  177. 
when  may  cover  plurality  of  inventions,  180. 

LICENSES, 

arising  from  acquiescence,  312. 

arising  from  estoppel,  312,  313. 

arising  from  recovery  of  damages  or  profits,  314. 

as  defences  to  motions  for  preliminary  injunctions,  682. 

assignability  of,  310. 

construction  of,  306. 

defined,  296. 

duration  of,  308. 

express,  with  implied  incidents,  297-801. 

express,  without  implied  incidents,  800,  802. 

forfeiture  of,  808. 

from  one  of  several  mutual  owner*,  805. 

how  pleaded  in  actions  at  law,  465. 

how  pleaded  in  actions  in  equity,  618. 

how  proved,  530 

implied  from  conduct,  812. 

need  not  be  negatived  in  declarations,  484. 

need  not  be  negatived  in  plaintiff's  evidence  in  chief,  496. 

none  required,  to  buy  specimens  of  patented  things,  299. 


742  INDEX. 

LICENSES —  Continued. 
notice  of,  304. 
purely  implied,  311. 
recording  of,  304. 
to  corporations,  310. 
to  one  of  several  joint  users,  305. 
to  partnerships,  310. 
written  or  oral,  303. 

LICENSEES, 

how  suing  for  infringement,  400. 

need  not  join  in  surrender  and  reissue,  252. 

of  one  of  several  mutual  owners,  294,  305. 

when  evicted,  307. 

when  sued  as  infringers,  309. 

LIMITATION  OF  TIME, 

relevant  to  filing  bills  of  review,  651,  652. 
relevant  to  filing  bills  of  revivor,  627. 

LOVE,  JUDGE, 

opinion  on  construction  of  the  national  statute  of  limitation,  475. 
opinion  on  -mode  of  operation,  343. 

LOWELL,  JUDGE, 

opinion  on  costs  in  cases  of  disclaimers,  205. 
opinions  on  invention,  27,  31,  37. 
opinion  on  novelty,  69. 

opinion  on  liability  of  officers,  directors,  and  stockholders  of  cor- 
porations for  corporate  infringement,  410. 
opinion  on  State  statutes  of  limitation,  477. 
opinion  on  subjects  of  patents,  5. 

MACHINES, 

claims  in  specifications  of,  117. 
defined,  16. 

distinguishable  from  manufactures,  19. 
subjects  of  patents,  1. 

MAGISTRATES,- 

before  whom  oath  may  be  made  to  affidavits,  584. 
before  whom  oath  may  be  made  to  specifications,  122. 

MAKING, 

more  than  two  years  before  application  for  letters  patent,  99. 

MANDAMUS, 

to  compel  Commissioner  of  Patents  to  allow  appeal,  132. 
when  not  grantable,  134. 

MANUFACTURES, 

claims  in  specifications  of,  1 18. 


INDEX. 

MAN  UFACTURK8 —  Continued. 

distinguishable  from  compositions  of  matter  and  from  machines,  19. 
patent-law  meaning  of  the  word,  17. 
subjects  of  patents,  1. 

MARKING  ' '  PATENTED,  ' ' 

making  or  selling  without,  how  fur  a  defence  in  equity,  616. 
making  or  selling  without,  how  pleaded  in  actions  at  law,  468. 
making  or  selling  without,  how  pleaded  in  actions  in  equity,  616. 
making  or  selling  without,. how  proved,  528. 

making  or  selling  without,  need  not  be  negatived  by  plaintiff's  evi- 
dence in  chief,  496. 

MARRIED  WOMEN, 

as  assignors  and  assignees  of  patent  rights,  275. 
as  defendants  in  patent  cases,  402. 

MASTERS  IN  CHANCERY, 

draft  reports  of,  744. 

exceptions  to  reports  of,  745-749. 

fees  of,  by  whom  paid,  739. 

final  reports  of,  750. 

hearing  in  equity  cases  before,  632,  643. 

infringement  investigated  by,  in  point  of  extent,  742. 

infringement  investigated  by,  in  point  of  varieties,  748. 

proceedings  before,  739-743. 

system  of  practice  relevant  to  findings  of,  750. 

taking  account  before,  when  stopped,  648. 

MATTHEWS,  JUSTICE, 

opinion  on  invention,  24,  82. 

MCCRARY,  JUDGE, 

opinion  on  mode  of  operation,  848. 

MCKENNAN,  JUDGE, 

opinion  on  novelty,  69. 

opinion  on  extra-territorial  operation  of  grant,  288. 

McLEAW,  JUSTICE, 

opinion  on  force  of  Commissioner's  decision  in  reissue  cases,  222. 
opinion  on  witness  fees  taxable  as  costs,  548. 

MECHANIC-EMPLOYES, 

as  defendants  in  actions  for  infringement,  403. 

MENTAL  CONCEPTIONS, 

inventions  do  not  date  from,  70. 

MILLER,  JUSTICE, 

opinion  on  patents,  153. 

opinion  on  injunctions  after  expirations  of  patent*,  698. 


744  INDEX. 

MILLER  v.  BRASS  Co., 
defence  in,  226. 

defence  in,  how  pleaded  in  actions  at  law,  458. 
defence  in,  how  pleaded  in  actions  in  equity,  611. 
defence  in,  how  proved,  523. 

MINORS, 
'••'-.     as  defendants  in  actions  for  infringement,  402. 

MISTAKE, 

causing  reissuable  faults,  220. 

justifying  disclaimers,  195,  196. 

remedy  for  issuing  or  obtaining  patent  through,  321. 

MODE  OP  OPERATION, 

as  affecting  infringement,  341-346a. 
described  in  specifications,  111. 
novelty  of,  when  necessary  to  invention,  37. 
when  changed  by  omission  of  parts,  35. 

MODELS, 

amendment  of,  138,  214. 

making  of,  may  constitute  birth  of  subsequently  patented  inven- 
tions, 70. 

never  negative  novelty,  61. 
when  required,  127. 

MONTHS, 

lunar,  not  calendar,  125. 

MOTIONS, 

alleging  non-jurisdiction  of  equity,  594. 

for  attachments,  708-710. 

for  preliminary  injunctions,  659-663. 

to  dissolve  preliminary  injunctions,  659,  692-694. 

to  reinstate  dissolved  preliminary  injunctions,  695. 

to  dissolve  reinstated  preliminary  injunctions,  695. 

to  strike  evidence  from  the  record,  600. 

MOWRY  v.  WHITNEY, 

the  rule  of  profits  in,  725-735. 

NELSON,  JUSTICE, 

opinion  on  injunctions  in  interference  actions,  319. 
opinion  on  interest  on  profits,  737. 
opinion  on  joint  invention,  46. 

opinion  on  liability  of  officers,  directors,  and  stockholders  of  corpora- 
tions, for  corporate  infringement,  410. 

NEW  MATTER, 

in  reissues,  214. 

meaning  of  the  phrase,  240. 


INDEX.  745 

NEW  TRIALS, 

in  actions  at  law  for  infringement,  539. 

NHW  USE, 

of  old  thing  not  invention,  38. 

NIXON,  JUDGE, 

opinion  on  duration  of  patents  for  inventions  previously  patented  in 

a  foreign  country,  163. 
opinion  on  force  of  Commissioner's  decision  in  reissue  cases,  223. 

NOTICE, 

constructive,  of  letters  patent,  191. 

of  licenses,  304. 

of  motions  for  preliminary  injunctions,  661. 

of  special  matter,  444. 

protecting  prior  unrecorded  assignments,  281. 

NOVELTY, 

as  affected  by  another  patent  to  same  inventor  for  same  invention,  69. 

as  affected  by  prior  abandoned  experiments,  63. 

defined,  53. 

depends  on  questions  of  fact,  75. 

evidence  of  want  of,  506-508. 

must  be  put  in  issue  in  declarations,  424. 

necessary  to  patentability,  52. 

negatived  by  prior  knowledge  and  use  in  this  country,  71. 

negatived  by  prior  making  in  this  country,  72. 

negatived  by  prior  patent,  54,  57. 

negatived  by  prior  printed  publication,  54,  55,  57. 

negation  of,  not  averted  by  ignorance  of  anticipating  matter,  73. 

negation  of,  not  averted  by  producing  old  thing  from  new  source,  74. 

not  negatived  by  antiquity  of  part,  66. 

not  negatived  by  anything  neither  designed,  apparently  adapted,  nor 

actually  used,  to  perform  the  same  function,  68. 
not  negatived  by  anything  occurring  after  the  date  of  the  invention,  69. 
not  negatived  by  description  in  prior  application,  60. 
not  negatived  by  incomplete  prior  description,  57. 
not  negatived  by  prior  abandoned  application,  58. 
not  negatived  by  prior  accidental  and  not  understood  production,  67. 
not  negatived  by  prior  description  of  substantially  different  thing  or 

process,  57. 

not  negatived  by  prior  model,  61. 
not  negatived  by  prior  private  foreign  patent,  55. 
not  negatived  by  prior  English  preliminary  specification,  55. 
not  negatived  by  prior  use  in  foreign  country,  54. 
not  negatived  by  prior  useless  process  or  thing,  65. 
not  negatived  by  substantially  different  prior  process  or  thing,  62, 
not  negatived  by  unpublished  drawings,  61. 


746  INDEX. 

NOVELTY — Continued.  • 
of  designs,  64. 

predicated  of  everything  which  is  absolutely  new,  52. 
predicated  of  some  things  not  absolutely  new,  53. 
want  of,  how  pleaded  in  actions  at  law,  447. 
want  of,  how  pleaded  in  actions  in  equity,  600. 
want  of,  how  proved.  76,  506-508. 
want  of,  how  rebutted,  509,  510. 

OATHS, 

affirmations  substituted  for,  134. 

effect  of  waiving,  in  bills,  581. 

to  answers,  581. 

to  bills  in  equity,  584. 

to  pleas  in  equity,  589. 

to  specifications,  122,  123. 

OBITER  DICTA, 

weight  of,  537. 

OBJECTIONS, 

to  evidence,  535. 

to  evidence  before  masters,  741. 

OFFICERS  OF  CORPORATIONS, 

as  defendants,  410,  411,  413,  415. 

OMISSION, 

as  affecting  infringement,  338,  349,  369. 

as  affecting  invention,  35. 

as  affecting  sameness  of  invention,  244. 

ON  SALES, 

in  foreign  country  more  than  two  years  before  application,  101. 
more  than  two  years  before  application,  98. 
patent-law  meaning  of  the  phrase,  96. 

OPTIONS, 

of  patentee-licensor  to  sue  for  royalty  or  for  infringement,  309. 

ORAL  DESCRIPTIONS, 

whether  fixing  dates  of  subsequently  patented  inventions,  70. 

OWNERS  IN  COMMON, 

as  plaintiffs  or  complainants,  899. 
must  join  in  surrender  and  reissue,  252. 

PARKER  &  WHIPPLK  Co.  v.  YALE  CLOCK  Co., 
rule  in,  233. 

PARTITION, 

of  patent  rights,  295. 


INDEX.  747 

PARTNERSHIPS, 

as  defendants,  408. 
licenses  to,  310. 

PATENTABILITY, 

prerequisites  of,  6,  23. 

PATENTS, 

alleged  abandonment  of,  106,  107. 

beginning  of  terms  of,  170. 

consideration  given  for,  153. 

duration  of,  162-165. 

expiration  of,  before  end  of  apparent  term,  how  pleaded  in  actions  at 

law,  462. 
expiration  of,  before  end  of  apparent  term,  how  pleaded  in  actions  in 

equity,  615. 

expiration  of,  before  end  of  apparent  term,  how  proved,  527. 
founded  upon  what,  150. 
granted  for  what  subjects,  1. 
interfering,  315. 
not  odious  monopolies,  153. 
plurality  of.  when  suable  on  in  one  action,  417 
repeal  of,  321. 
territory  covered  by,  160. 
when  dated,  170. 

PATENT  LAWS, 

the  sources  of,  537,  634. 

PATENT  RIGHTS, 

absolute,  not  qualified,  154. 

dignity  of,  152. 

exclusive  of  government,  157. 

not  subject  to  common  law  execution,  156. 

property,  151. 

relevant  to  specimens  made  or  purchased  before  application  for,  158 

subject  to  creditors'  bills,  156. 

PATENT  OFFICE  RULES, 

founded  on  what,  109. 

governing  applications,  109. 

relevant  to  applications,  100. 

relevant  to  drawings,  126. 

relevant  to  interferences,  140. 

relevant  to  models,  127. 

relevant  to  specimens  of  compositions  of  matter,  128. 

PENALTIES, 

for  disobedience  of  Injunctions,  710. 
in  qui  tarn  actions,  829. 


748  INDEX. 

PERPETUATION  OP  TESTIMONY, 
bills  for,  585. 

PETITIONS, 

for  letters  patent,  110. 

PLAINTIFFS, 

costs  recoverable  by,  543. 

in  actions  at  law  for  infringement,  394-400. 

in  qui  tarn  actions,  330. 

PLEAS  IN  ACTIONS  AT  LAW, 

bad  in  part,  bad  altogether,  482. 

demurrable,  when,  484. 

dilatory,  439. 

in  bar,  440. 

of  actual  abandonment,  449. 

of  constructive  abandonment,  449. 

of  deceptively  lacking  or  excessive  specification,  453. 

of  estoppel,  467. 

of  expiration  of  patent,  462. 

of  indistinct  claims,  455. 

of  insufficient  specification,  454. 

of  joint  invention  for  sole  patent,  452. 

of  joint  patent  for  sole  invention,  452. 

of  license,  465. 

of  making  or  selling  without  marking  "  patented,"  463. 

of  non-infringement,  466. 

of  release,  465. 

of  repeal  of  patent,  461. 

of  rule  in  Miller  v.  Brass  Co.,  458. 

of  statutes  of  limitation,  471. 

of  surreptitious  or  unjust  obtaining  of  patent,  451. 

of  unreasonable  delay  to  file  needed  disclaimer,  456. 

of  want  of  being  a  statutory  subject  of  a  patent,  446. 

of  want  of  identity  between  application  and  letters  patent,  450. 

of  want  of  identity  between  letters  patent  and  reissue,  459. 

of  want  of  invention,  446. 

of  want  of  novelty,  447. 

of  want  of  reissuability,  457. 

of  want  of  statutory  application  for  extension,  460. 

of  want  of  title,  464. 

of  want  of  utility,  448. 

PLEAS  IN  ACTIONS  IN  EQUITY, 
found  bad  in  law,  590. 
found  good  in  law  and  true  in  fact,  590,  649. 
found  good  in  law,  and  untrue  in  fact,  590. 
proceedings  on,  590. 


INDEX. 

PLEAS  IN  ACTIONS  IN  EQUITY—  Continued. 
replications  to,  590. 

to  bills  in  the  nature  of  supplemental  bills,  631. 
to  original  bills,  588,  589. 
to  supplemental  bills,  631. 

POLICE  POWERS, 

over  specimens  of  patented  things,  155. 

PRACTICE, 

in  actions  at  law,  489. 
in  actions  in  equity,  489. 
on  bills  to  repeal  patents,  323. 
on  masters'  findings,  750. 

PRAYERS, 

for  preliminary  injunctions,  660. 
for  process,  582. 
for  relief,  580. 

PREAMBLE, 

of  specifications,  111,  112. 
PRESUMPTIONS, 

that  inventors  borrowed  whatever  in  their  inventions  was  old.  43. 

that  letters  patent  are  for  same  inventions  as  applications,  190. 

that  reissues  are  for  same  inventions  as  originals,  243. 

PRIMARY  INVENTIONS, 
defined,  359. 

PRIMARY  PATENTS, 

ho'w  infringed,  360,  362. 

PRINCIPLE, 

of  invention,  how  explained  in  specification,  115. 

PRINCIPLES, 

distinguished  from  processes,  7-15. 
not  patentable,  2,  7. 

PRINTED  PUBLICATIONS, 
defined,  56. 

PRIOR  ABANDONED  EXPERIMENTS, 
as  affecting  novelty,  63. 

PRIOR  ADJUDICATION, 

a  foundation  for  a  preliminary  injunction,  665,  666. 

PRIOR  MAKING, 

may  negative  novelty,  72. 

PRIOR  PRINTED  PUBLICATION, 
negatives  novelty,  56. 


750  INDEX. 

PRIOR  PRIVATE  FOREIGN  PATENT, 
never  negatives  novelty,  55. 

PRIOR  PUBLIC  PATENT, 

negatives  novelty,  55. 

PRIOR  PRELIMINARY  ENGLISH  SPECIFICATION, 
never  negatives  novelty,  55. 

PRIOR  USE, 

in  foreign  country  when  negatives  novelty,  54. 
in  this  country  negatives  novelty,  71. 

PRIORITY, 

question  of,  between  rival  inventors,  how  settled,  140-142,  315-320. 

PROCESSES, 

claims  for,  how  construed,  186. 

distinguished  from  principles,  7-15.  . 

patent-law  meaning  of  the  word,  3-6. 

PROCESS  PATENTS, 

claims  in  specifications  of.  120. 

exclusive  of  those  who  practised  the  process  after  invention  and  be- 
fore application,  159. 
infringed,  how,  335-338. 

PROFERT, 

in  declarations  and  bills  of  complaint,  433,  579. 

PROFITS, 

account  of,  covering  what  time,  714.  '.. 

accruing  before  surrender  and  reissue,  231. 

decrees  for,  573. 

defendants',  recoverable  in  equity,  711. 

evidence  of,  636,  740. 

from  infringement  by  making  and  selling,  717-723,  735. 

from  infringement  by  selling,  724. 

from  infringement  by  using,  725-734. 

generic  rule  for  ascertaining,  715. 

interest  on,  736-738. 

not  measured  by  damages,  716. 

proceedings  for  ascertaining,  739-750. 

recoverable  in  cases  of  joint  infringement,  712. 

recoverable  in  cases  where  infringement  was  partly  unprofitable,  713. 

PROPORTION, 

change  of,  as  affecting  infringement  of  patent  for  composition  of  mat- 
ter, 373. 

PUBLIC  KNOWLEDGE, 

after  invention  and  prior  to  application,  100. 


INDEX.  751 


PUBLIC  USE, 

more  than  two  years  before  application,  98. 
patent-law  meaning  of  the  phrase,  94,  95. 

QUESTIONS  OP  FACT, 

abandonment,  108. 

absence  or  presence  of  invention,  42. 

infringement,  339. 

novelty,  75. 

sufficiency  of  specification,  179. 

Supreme  Court  decisions  on,  635. 

QUESTIONS  OF  LAW, 

arising  on  hearings  in  equity,  634. 
arising  on  trials  at  law,  537. 
construction  of  letters  patent,  189. 

Qui  TAM  ACTIONS, 

declarations  in,  832. 

form  of,  332. 

functions  of,  324. 

penalties  in,  329. 

plaintiffs  in,  330. 

writs  of  error  in,  834. 

wrongs  remedied  by,  825-327. 

RAILWAY  Co.  «.  SATLES, 
rule  in,  184,  359-362. 

REARRANGEMENT, 

of  parts  as  affecting  infringement,  348. 

RECEIVER, 

of  court  invoking  licenses  to  insolvent,  310. 

RECORD, 

letters  patent,  matter  of,  191. 

RECORDING, 

of  assignments,  281. 
of  grants,  287. 
of  licenses,  804. 

RECOVERY, 

of  damages  or  profits  working  license,  d!4. 

REFEREE, 

trial  by,  541. 

REHEARING, 

effect  of,  on  accounting,  648. 

for  matter  apparent  on  the  record,  646. 

on  account  of  newly  discovered  evidence,  647. 

petitions  for,  645. 


752  INDEX. 

REINVENTION, 

what  right  conferred  by,  158. 

REISSUES, 

applications  for,  214. 

beginning  of  history  of,  210. 

broadened,  219,  226,  227. 

claims  of,  disclaimed,  201. 

construed  liberally,  248. 

covered  by  assignment  of  original,  250. 

covering  things  made  before  date  of,  254. 

how  stated  in  declarations,  429. 

invalidity  of,  for  want  of  reissuability  of  original,  how  pleaded  in 
actions  at  law,  457. 

invalidity  of,  for  want  of  reissuability  of  original,  how  pleaded  in  ac- 
tions in  equity,  610. 

invalidity  of,  for  want  of  reissuability  of  original,  how  proved, 
522. 

legal  effect  of,  254. 

must  be  for  same  invention  as  original,  233. 

mutual  owners  must  join  in  applications  for,  252. 

new  matter  in,  214. 

not  affected  by  more  than  two  years'  prior  public  use  or  sale,  229. 

not  granted  after  expiration  of  original,  232. 

novelty  of,  dating  from  when,  254. 

of  reissues,  232. 

other  than  broadened,  228. 

yn-ima  facie  evidence  of  their  own  validity,  493. 

remedies  for  refusal  to  allow,  214. 

rights  of  grantees  under,  253. 

to  assignees,  212,  214,  250,  252. 

to  executors  or  administrators,  250. 

to  one  of  several  executors,  251. 

statutory  foundation  of,  211-215. 

subjects  of,  216. 

substituting  equivalents  in,  247. 

under  the  statute  of  1832,  211. 

under  the  statute  of  1836,  212. 

under  the  statute  of  1837,  213. 

under  the  statute  of  1870,  214. 

under  the  Revised  Statutes,  215. 

under  general  authority  of  the  Commissioner,  210. 

void  in  part  and  valid  in  part,  249. 

when  may  claim  single  device  shown,  but  not  separately  claimed  in 
the  original,  246. 

when  may  claim  sub-combination  shown  in  the  original,  245. 

where  there  is  neither  model  nor  drawing,  214 


INDEX.  753 

REJOINDERS, 

bad  in  part,  bad  altogether,  482. 

function  of,  in  actions  at  law  for  infringement,  478,  480. 

RELEASES, 

how  pleaded  in  actions  at  law,  465. 

how  pleaded  in  actions  in  equity,  019. 

how  proved,  531. 

need  not  be  negatived  in  plaintiff's  evidence  in  chief,  496. 

to  one  of  several  joint  inf ringers,  531. 

REMEDIES, 

for  infringement,  where  treated  in  this  book,  378. 

REPAIRING  PATENTED  MACHINE, 
how  far  lawful,  301. 

REPEAL  OP  PATENTS, 

for  what  cause  had,  321. 

in  what  courts  obtainable,  322,  323. 

how  pleaded  in  actions  at  law,  461. 

how  pleaded  in  actions  in  equity,  614. 

how  proved,  526. 

practice  in  cases  of  bills  for,  323. 

REPLICATIONS  IN  ACTIONS  AT  LAW, 

bad  in  part,  bad  altogether,  482. 
function  of,  in  patent  cases,  478-480. 

when  demurrable  in  patent  cases,  485. 
• 
REPLICATIONS  IN  ACTIONS  IN  EQUITY, 

to  answers,  623. 
to  pleas,  590. 

REPORTS, 

exceptions  to  masters',  745-749. 
masters'  draft,  744. 
masters'  final,  750. 

RES  JUDICATA, 

foundation,  limitations,  and  operation  of  the  doctrine  of,  468. 

how  pleaded  in  actions  at  law,  470. 

how  pleaded  in  actions  in  equity,  621. 

how  proved,  533. 

in  interferences,  141,  142. 

RESULT, 

as  affecting  infringement,  340. 
necessary  to  utility,  77. 

RIGHTS, 

kinds  of,  in  patented  inventions,  155. 

of  inventors,  patentees,  etc.,  where  treated  fa  this  book,  878. 


754  INDEX. 

RIGHTS  OF  ACTION, 

assignment  of,  277. 

assignment  of,  how  protected  from  subsequent  purchasers,  281. 

ROOT  t>.  RAILWAY  Co., 

rule  in,  572,  592,  593. 

ROYALTIES, 

as  measures  of  damages,  556-558. 

established  rate  of,  how  affecting  right  to  preliminary  injunctions,  686. 

for  making,  564. 

for  making  and  using,  no  criterion  of  damages  for  making  and  selling, 

or  vice  versa,  561. 

of  plaintiff,  no  measure  of  recoverable  profits,  716. 
option  of  patentee-licensor  to  sue  for,  or  for  infringement,  309. 
regard  to  proportion,  in  measuring  damages  by,  562. 
reserved  on  sale  of  patents,  no  measure  of  damages,  560. 

SAGE,  JUDGE, 

opinion  on  actions  for  assigned  rights  of  action,  395. 

SAME  INVENTION, 

as  affected  by  omission  of  parts,  244. 

how  disproved,  243. 

implies  sameness  with  original  and  all  former  reissues,  242. 

letters  patent  must  be  for  same  as  applications,  138,  440,  450,  514,  603. 

meaning  of  the  phrase,  233. 

presumption  of,  190,  243. 

reissues  must  be  for  same  as  originals,  233,  440,  459,  524,  612. 

SAWYER,  JUDGE, 

opinion  of,  on  witness  fees  as  taxable  costs,  548. 

SECONDARY  INVENTIONS, 
defined,  359. 

SECONDARY  PATENTS, 

how  infringed,  361,  362. 

SHEPLEY,  JUDGE, 

opinion  of,  on  repeal  of  patents,  322. 
opinion  of,  on  State  statutes  of  limitation,  477. 
opinion  of,  on  substitution  of  ingredients  in  compositions  of  matter, 
371. 

SHIPMAN,  JUDGE  NATHANIEL, 

opinion  of,  on  decree  where  disclaimer  is  found  necessary,  209. 
opinion  of,  on  invention,  29. 
opinion  of,  on  novelty,  65. 

SHIPMAN,  JUDGE  W.  D., 

opinion  of,  on  indistinctness  of  claims,  177. 


INDEX.  755 

SHIPMAN,  JUDGE  W.  D.— Continued. 

opinion  of,  on  liability  of  officers,  directors,  and  stockholders  of  cor- 
porations for  corporate  infringement,  410. 
opinion  of,  on  proceedings  before  masters,  741. 

SHIPS, 

American,  practice  of  patented  invention  on  board  of,  on  high  seas, 

161. 

foreign,  use  of  patented  invention  on  board  of,  in  United  States  ports, 
161. 

SHIRAS,  JUDGE, 

opinion  of,  on  mode  of  operation,  343. 

opinion  of,  on  admissibility  of  depositions  in  interference  suits,  318. 

SIGNATURES, 

to  drawings,  126. 

to  specifications,  111,  121. 

SIMILITER, 

function  and  importance  of,  481. 

SKILFUL  MECHANIC, 

meaning  of  the  phrase,  57. 

SOLE  INVENTION, 

distinguished  from  joint  invention,  45,  46. 

for  joint  patent,  51. 

not  inconsistent  with  received  mechanical  assistance,  49. 

not  inconsistent  with  specially  sought  information,  48. 

SPECIAL  PLEADING, 

ancient  function  of,  442. 

SPECIFIC  PERFORMANCE, 

enforced,  of  contracts  relevant  to  patent  rights,  286. 

SPECIFICATION, 

claims,  the  operative  parts  of,  219. 

constituents  of,  111. 

deceitfully  lacking  or  excessive,  how  pleaded  in  actions  at  law,  458. 

deceitfully  lacking  or  excessive,  how  pleaded  in  actions  in  equity, 

606. 

deceitfully  lacking  or  excessive,  how  proved  to  be,  518. 
insufficient,  how  pleaded  in  actions  at  law,  454. 
insufficient,  how  pleaded  in  actions  in  equity,  607. 
insufficient,  how  proved  to  be,  519. 
meaning  of  the  word,  173,  217. 
oath  to,  122,  123. 

STANDARD  OF  COMPARISON, 

under  the  rule  in  Mowry  t>.  Whitney,  782-784. 


756  INDEX. 

STATES, 

power  of,  over  patented  articles,  155. 

STATE  COURTS, 

jurisdiction  of,  over  actions  to  enforce  or  set  aside  contracts  relevant 

to  patents,  388. 
jurisdiction  of,  over  creditors'  bills  filed  to  collect  debts  out  of  patent 

rights,  289. 

question  of  jurisdiction  of,  in  infringement  actions,  380-387. 

• 
STATE  OP  THE  ART, 

affecting  questions  of  invention,  43. 
claims  construed  in  the  light  of,  184. 
evidence  of  experts  relevant  to,  500. 
mistake  relevant  to,  how  remedied,  220. 

STATUTES, 

special,  grafted  upon  general  statutes,  188. 

STATUTES  OP  LIMITATION, 

application  of,  to  actions  in  equity,  622. 

how  pleaded  in  actions  at  law,  471. 

how  pleaded  in  actions  in  equity,  622. 

the  national,  472-475. 

the  State,  476,  477. 

when  requiring  evidence  to  support  plea  of,  534. 

STOCKHOLDERS  IN  CORPORATIONS, 

as  defendants.  410,  411,  412,  415. 

STORY,  JUSTICE, 

opinion  of,  on  abandonment  of  patents,  107. 

opinion  of,  on  jurisdiction  of  State  courts  in  patent  cases,  382. 

opinion  of,  on  liability  of  officers,  directors,  and  stockholders  of 

corporations  for  corporate  infringement,  415. 
opinion  of,  on  patent  covering  thing  made  before  application,  158, 

159. 

STRONG,  JUSTICE, 

opinion  of,  on  force  of  Commissioner's  decision  in  reissue  cases,  222. 

SUB-COMBINATIONS, 

when  may  be  claimed  in  reissues,  though  not  claimed  in  originals, 
245. 

SUBJECT  OP  PATENT, 

want  of  being,  how  pleaded  in  actions  at  law,  446. 
want  of  being,  how  pleaded  in  actions  in  equity,  598. 
want  of  being,  how  proved,  504. 

SUBSTANTIALLY, 

variant  force  of  the  word,  362. 


INDEX.  757 

SUBSTANTIALLY  AS  DESCRIBED, 
function  of  the  phrase,  182. 
when  the  phrase  is  implied,  182. 

SUBSTITUTION, 

as  affecting  infringement,  350,  370,  371. 

SUGGESTIONS  TO  INVENTORS, 

distinguished  from  joint  invention,  47. 

SUPERSEDEAS, 

on  appeal  to  Supreme  Court,  654. 

SUPPLEMENTAL  BILLS, 

leave  "of  court  necessary  to  filing,  630. 
subordinate  to  original  bills,  624. 
when  proper,  625. 

SUPPLEMENTAL  BILLS  IN  THE  NATURE  OP  BILLS  OF  REVIEW, 
character  and  function  of,  647,  648. 

SUPREME  COURT  OP  THE  UNITED  STATES, 
action  of,  on  appeals,  656. 

action  of,  on  certificates  of  division  of  opinion,  657. 
application  to,  for  leave  to  file  in  court  below,  a  bill  of  review,  in  a 

case  already  sent  to  Supreme  Court,  652. 
hearing  of  appeals  in,  655. 
writs  of  error  in,  550. 

SUPREME  COURT  OP  THE  DISTRICT  OF  COLUMBIA, 
appeals  to,  132,  133. 

SUR-REJOINDERS, 

function  of,  in  actions  at  law  for  infringement,  478. 

SURRENDER  OP  INVENTIONS, 
how  effected,  105. 

SURRENDER  OF  LETTERS  PATENT, 

effect  of.  on  accrued  damages  and  profits,  281.  " 
mutual  owners  must  join  in,  252. 
when  reissue  is  refused,  231. 
with  a  view  to  reissue,  230-232. 

SUSPENSION, 

of  permanent  injunctions  pending  appeals,  708. 

SWAYNE,  JUSTICE, 

opinion  of,  on  force  of  Commissioner's  decision  in  reissue  cases,  238. 
opinion  of,  on  joint  invention,  46. 

TANEY,  CHIEF-JUSTICE, 

opinion  of,  on  reissuability  of  patents,  226. 


758  INDEX. 

TAXATION  OF  COSTS, 
appeal  from,  549. 
how  and  when  made,  549. 

TEMPORARY  RESTRAINING  ORDERS, 

pending  motions  for  preliminary  injunctions,  664. 

TENANCY  IN  COMMON, 

in  patent  rights,  292. 

TENANTS  IN  COMMON, 
rights  of,  294. 

TENURES, 

upon  which  patent  rights  may  be  held,  274. 

TERM  OF  PATENT, 

how  fixed,  112. 

TERRITORY, 

covered  by  patents,  160. 

TEST  CASES, 

pendency  of,  excusing  delay,  684. 

TESTIMONY, 

in  actions  at  law,  535. 
in  actions  in  equity,  638. 

TEXT  WRITERS, 

weight  of  statements  of,  537. 

THEORY, 

invention  which  resides  in,  may  be  patentable,  23. 

TIME, 

for  taking  depositions  in  actions  in  equity,  639. 

TITLE, 

after  acquired,  282. 

by  assignment,  274. 

by  bankruptcy,  290. 

by  creditor's  bill,  289. 

by  death,  291. 

by  grant,  287. 

by  occupancy,  273. 

certainty  of,  necessary  to  preliminary  injunction,  665,  675. 

conveyance  of  legal,  conveying  equitable,  286. 

conveyed  by  estoppel,  275. 

equitable,  how  arising,  274,  285. 

how  stated  in  declarations,  432. 

how  proved,  495. 

in  a  plurality  of  persons,  292. 

inchoate,  273. 


INDEX.  T.V.t 

TITLE—  Continued. 

methods  of  acquisition  of,  272. 

to  reissues,  250. 

to  reissues  when  granted  to  executors  or  administrators,  251. 

variant  nature  of,  272. 

want  of,  how  pleaded  in  actions  at  law,  464. 

want  of,  how  pleaded  in  actions  in  equity,  617. 

want  of,  how  proved,  529. 

warranty  of,  282. 

TBESPASS  ON  THE  CASE, 

actions  of,  for  infringements  of  patents,  418,  421. 
character  of  actions  of,  442. 
declarations  in  actions  of,  422-438. 

TRIALS, 

by  judges  without  juries,  540. 

by  juries,  488. 

by  juries  in  equity  cases,  642. 

by  juries,  of  issues  sent  out  of  equity,  595. 

by  referees,  541. 

of  actions  at  law,  487. 

TRUSTEE, 

infringer  treated  as,  in  respect  of  his  profits,  715. 

TRUSTS, 

constructive,  285. 
resulting,  285. 

Two  YEARS, 

sale  or  public  use  more  than,  before  application,  93,  229. 

UNANIMITY  OP  JURIES, 

history  of,  488. 

UNAUTHORIZED  MARKING, 
how  punished,  325. 
how  restrained,  333. 

USEFUL  ART, 

subject  of  a  patent,  1. 

USES, 

all,  of  patented  thing,  covered  by  the  patent,  180. 

UTILITY, 

burden  of  proof  in  respect  of,  85. 

constituent  elements  of,  77. 

doubts  relevant  to,  85. 

in  respect  of  infringement,  876. 

may  reside  in  beauty,  80. 

must  be  stated  in  declarations,  424. 


760  INDEX. 

UTILITY —  Contmited. 

necessary  to  patentability,  77. 

necessary  to  whatever  is  claimed  to  negative  novelty,  65. 

negatived  where  function  is  always  evil,  81. 

not  negatived  by  mere  imperfection,  79. 

patents  prima  facie  evidence  of,  85. 

performance  of  specified  function  necessary  to,  78. 

want  of,  how  pleaded  in  actions  at  law,  448. 

want  of,  how  pleaded  in  actions  in  equity,  601. 

want  of,  how  proved,  511. 

when  functions  are  thought  by  some  to  be  good,  and  by  others  to  be 

evil,  83. 

where  functions  sometimes  work  good,  and  sometimes  work  evil,  82. 
where  primary  function  is  good,  and  ultimate  function  is  evil,  84. 

VALIDITY, 

certificate  of  extension  prima  facie  evidence  of  its  own,  493. 
defendant's  admission  of,  when  foundation  of   right  to  preliminary 

injunction,  673. 

letters  patent  prima  facie  evidence  of  their  own,  491. 
reissues  prima  fade  evidence  of  their  own,  492. 
special  presumption  of,  necessary  to  preliminary  injunction,  665. 
warranty  of,  283,  284. 

VENUE, 

how  laid  in  declarations,  422. 

VERDICTS, 

in  patent  cases,  538. 

WALLACE,  JUDGE, 

opinion  of,  on  abandonment  of  patents,  107. 

opinion  of,  on  decree  where  disclaimer  is  found  necessary,  209. 

opinion  of,  on  jurisdiction  of  Federal  Courts,  388. 

opinion  of,  on  subjects  of  patents,  5. 

• 
WARRANTY, 

of  title,  282. 

of  validity,  283,  284,  307. 

WASHINGTON,  JUSTICE, 

opinion  of,  on  abandonment  of  patents,  106. 

opinion  of,  on  jurisdiction  of  State  courts  in  patent  cases,  383. 

WHEELER,  JUDGE, 

opinion  of,  on  actions  of  assumpsit  for  infringements  of  patents,  419. 

opinion  of,  on  decree  where  disclaimer  is  found  necessary,  209. 

opinion  of,  on  extra-territorial  operation  of  grant,  288. 

opinion  of,  on  force  of  Commissioner's  decision  in  reissue  cases,  223. 

opinion  of,  on  McClurg  v.  Kingsland,  159. 

opinion  of,  on  subjects  of  patents,  5. 


INDEX.  761 

WITNESSES, 

to  specifications,  121. 

to  want  of  novelty,  need  not  be  named  as  such,  in  notices  of  special 
matter,  444. 

WOODBURY,  JUSTICE, 

opinion  of,  on  rehearing  for  matter  apparent  on  face  of  record,  646. 

WOODRUFF,  JUDGE, 

opinion  of,  on  mode  of  operation,  345. 
opinion  of,  on  witness  fees  taxable  as  costs,  548. 

WOODS,  JUSTICE, 

opinion  of,  on  pleading  facts  of  which  courts  take  judicial  notice, 
445. 

WORKMANSHIP, 

distinguishable  from  invention,  27. 

WRITS  OF  ERROR, 

function  of,  550. 

in  qui  tarn  actions,  334. 

where  cases  are  tried  by  judges  without  juries,  540. 

WRONGS, 

classification  of,  411. 

of  infringement,  where  treated  in  this  book,  378. 


HSTDEX  TO  FORMS  AND  EQUITY  RULES. 


ABANDON  MENT,  BULK       PAGE 

of  allowance  of  amendment  of  bill 30            ii'.'J 

ACCOUNT, 

form  of,  to  be  submitted  to  masters. 79            709 

AFFIDAVIT, 

of  service  of  process 15            i's->'< 

supporting  motion  to  amend  bill  after  replication 29            691 

supporting  motion  to  set  aside  decree  pro  eonfetto 19            688 

AFFIRMATION, 

in  lieu  of  oath 91            713 

AMENDMENT, 

of  answers 60            700 

of  bills  after  allowance  of  demurrer 85            '•'.''. 

of  bills  after  defendants'  pleading  and  before  replica- 

(  ti'M 

tion 29,45 

( otfo 

of  bills  after  replication 29            691 

of  bills  before  defendants'  pleading 28            691 

of  bills  by  adding  parties 52            •'•'.•* 

of  bills,  when  to  be  made  after  allowance 80            692 

ANSWER, 

amendment  of to 

defences  pleadable  in 19 

exceptions  to 61 

form  of 

separate,  when  improper 62 

to  amendment  ofTrill 46 

to  cross  bill 

to  supplemental  bill 67 

used  as  affidavit,  when 41 

verified  before  whom 59 


764  INDEX   TO   FORMS    AND    EQUITY   RULES. 

APPEARANCE,                                                                         RULE  PAGE 

of  defendants,  when  due 17  687 

of  nominal  defendants 54  698 

ATTACHMENT, 

writ  of,  to  compel  answer 18,  64  \      0 

i  7U« 

writ  of,  to  enforce  order  or  decree f 7,8  684 

BILL, 

address  of 20  688 

amendment  of,  after  answer 29,  45  '  „ 

(  696 

amendment  of,  after  replication 29  691 

amendment  of,  before  answer 28  691 

amendment  of,  by  adding  parties 52  698 

charging  part  unnecessary  in 21  688 

confederacy  part  unnecessary  in 21  688 

effect  of  waiving  answer  under  oath  in 41  694 

form  of 670 

frame  of 20  688 

impertinence  in 26  690 

interrogating  part  of , 40,  41,  43  694 

introductory  part  of 20  688 

jurisdiction  part  unnecessary  in 21  688 

must  be  filed  before  subpoena  can  issue 11  685 

nominal  parties  to 54  698 

prayers  of 21  688 

requisite  statement   of,   when  filed    by  stockholder 

against  corporation  and  other  parties 94  712 

scandalous  matter  in 26  690 

signature  of  counsel  to 24  690 

stating  part  of 21  688 

taken  pro  confesso ,  18  687 

BILL  IN  THE  NATURE  OP  A  BILL  OP  REVIVOR, 

when  necessary 56  699 

BILL  IN  THE  NATURE  OP  A  SUPPLEMENTAL  BILL, 

when  necessary 57  700 

BILL  OF  REVIVOR, 

statements  of 58  700 

when  necessary 56  699 

CIRCUIT  COURTS,  , 

always  open  for  certain  purposes 1  682 

power  of ,  to  make  additional  rules 89  711 

CLERKS  OP  CIRCUIT  COURTS, 

power  of,  to  grant  certain  motions 5  683 


INDEX   TO   FORMS    AND    EQUITY    RULES.  765 
COSTS,                                                                                                                       KULK          PAGE 

for  bill  or  answer. 25            690 

on  allowing  demurrer  or  plea 35            693 

on  exceptions  to  master's  report 84            710 

on  hearing  of  exceptions  to  answer 65            712 

on  neglect  to  prosecute  reference  to  master 74            707 

on  overruling  demurrer  or  plea 84            693 

CROSS  BILL, 

proceedings  upon 73            706 

DECLARATION, 

form  of 662 

DECREE, 

form  of 86             710 

how  enforced 7,  8            684 

in  cases  where  part  of  interested  persons  are  out  of 

jurisdiction 47             696 

in  cases  where  part  of  numerous  interested  persons 

are  not  made  parties 48            697 

in  foreclosure  cases 92            712 

pro  confesso,  how  entered 18            687 

pro  confesso,  how  set  aside 19            ('>ss 

reference  to  master  in 78            706 

when  correctable  without  rehearing 85            710 

where  objection  of  want  of  parties  is  first  made  at  the 

hearing 68             798 

DEMURRER, 

effect  of  allowing 85            698 

effect  of  overruling 84             •'•!':> 

necessity  of  setting  down  for  argument IB            694 

not  overruled  for  narrowness  36 

not  overruled  for  sameness  with  answer 87 

prerequisites  to  filing 81 

setting  down  for  argument 88 

to  supplemental  bills 57 

DOCKET, 

suits  when  entered  upon 16 

EVIDENCE, 

used  before  masters BO 

EXCEPTIONS  TO  ANSWERS, 

allowance  of w 

hearing  of  

overruling  of 65 

setting  down  for  hearing 68 

whentobefiled «1            701 


766  INDEX   TO   FORMS    AND    EQUITY    KULES. 

EXCEPTIONS  TO  MASTERS'  REPORTS,  RULE        PAGE 

filedwhen 83           710 

heardwhen 83            710 

FORM, 

of  answer 677 

of  bill 670 

of  declaration 662 

of  plea  in  equity 675 

of  plea  at  law 665 

of  replication  in  equity 681 

of  replication  at  law 668 

of  rejoinder 669 

of  sur-rejoinder 670 

GUARDIANS, 

adlitem 87             711 

as  parties 87             711 

HEARING, 

i  707 
before  masters 74,  77         j    __ 

of  demurrers 34-37  693 

of  exceptions  to  answer 63,  64             701 

of  exceptions  to  master's  report 83            710 

of  motions 6             684 

of  motions  for  injunctions 55             699 

of  motions  for  leave  to  file  supplemental  bills 57            700 

of  pleas 34-37  693 

want  of  parties  suggested  at 53            698 

what  testimony  read  at —  69            705 

INJUNCTIONS, 

duration  of 55             699 

motion  for 55             699 

prayer  for 21             688 

suspension  of,  pending  appeal 93            712 

when  granted  on  a  default 55             699 

INTERLOCUTORY  ORDERS, 

power  of  judges  to  make 3            682 

INTERROGATORIES, 

when  need  not  be  answered 44            696 

JUDGES, 

power  of,  to  make  interlocutory  orders 3            682 

power  of,  to  suspend,  alter,  or  rescind  orders  made  by 

clerks..                                                      5            683 


INDEX   TO   FORMS    AND    EQUITY    RULES.  767 

LACHES,                                                                                 Rmj5  PAOE 
fatal  to  motions  for  leave  to  amend  bill  after  replica- 
tion      29  691 

fatal  to  order  giving  permission  to  amend  bill 30  692 

fatal  to  order  referring  bill  to  master  for  scandal  or  im- 
pertinence        27  690 

MASTERS  IN  CHANCERY, 

compensation  of 82  709 

examining  bills  for  scandal  or  impertinence 26  >'<(» » 

exceptions  to  reports  of 88  710 

how  appointed s.      82  709 

proceedings  before 74-82  707 

references  to 78  706 

statements  in  reports  of 76  707 

MOTIONS, 

for  injunctions 55  699 

to  amend  answers 60  700 

to  amend  bills 29  691 

to  extend  time  for  taking  testimony 69  705 

to  file  replications,  nunc  pro  tune 66  702 

to  file  supplemental  bills 57  700 

to  set  aside  decrees  pro  confesso 19  ''>•**> 

when  grantable  by  clerks 5  <•*'•'• 

when  grantable  only  by  judges 6  684 

NOTE, 

to  interrogatories  in  bill 41,  42  694 

NOTICE, 

constructive,  of  orders,  rules,  and  proceedings. 4  688 

of  motion  for  injunction 01  '>'''> 

of  motion  to  amend  answer  60  700 

of  motion  to  amend  bill 29  691 

of  motion  to  file  supplemental  bill 57  700 

of  proceedings  before  masters 75-78  707 

to  take  evidence 67,  68,  70 

OBEDIENCE, 

( 684 
to  order  of  court,  how  compelled 7-10 

ORDER  BOOK, 

entry  of  defendant's  appearance  upon 17  '•*' 

how  kept 4  *••*'•'• 

PARTIES, 

guardians  as 87 

heirs-at-law  as 50  »'-'.iT 

nominal 64  ''•'.»•< 


768  INDEX   TO    FORMS    AND    EQUITY   RULES. 

PARTIES,                                                                                 RULE  PAGE 

objections  for  want  of 52  698 

trustees  as 49  697 

where  a  plurality  of  persons  are  jointly  and  severally 

liable 51  698 

where  interested  persons  are  out  of  the  jurisdiction. . .  47  696 

where  interested  persons  are  very  numerous 48  697 

PLEA, 

effect  of  allowance  of 35  693 

effect  of  overruling 34  693 

effect  of  proof  of  truth  of 33  693 

form  of,  in  equity 675 

form  of,  at  law 665 

necessity  of  replication  to,  or  setting  down  for  argument  38  694 

not  overruled  for  narrowness 36  693 

not  overruled  for  sameness  with  answer 37  693 

prerequisites  to  filing 31  692 

setting  down  for  argument 33  693 

taking  issue  upon 33  693 

to  supplemental  bills 57  700 

PLEADING, 

of  defendants,  varieties  of „ 32  692 

of  defendants,  when  due 18  687 

PRACTICE, 

when  governed  by  that  of  the  High  Court  of  Chancery 

in  England 90  712 

PRAYERS, 

for  general  relief 21  688 

for  injunctions 21,  23  \® 

( 689 

for  process  against  persons  without  the  jurisdiction. .  22  689 

forspecial  relief 21  688 

for  subpoena  ad  respondendum 23  689 

r  fiftft 

for  writ  of  ne  exeat ,*: 21,  23  \  „. 

(  Dot/ 

PROCESS, 

by  whom  served ! 15  686 

varieties  of 7  684 

PROCHIEN  AMIS, 

as  parties. 87  711 

REHEARING, 

petitions  for 88  711 

when  grantable 88  711 

REJOINDER, 

form  of..                                                                 ....  669 


INDEX   TO    FORMS    AND    EQ01TY    RULES.  769 

REPLICATION,  RCLK       PAQB 

effect  of  filing 66            708 

effect  of  omission  to  file 66            708 

form  of,  in  equity  681 

form  of,  at  law tins 

no  special,  allowed 45             t;'..«; 

when  to  be  fiL-d 66             7'»<> 

RULE  DAY, 

the  first  Monday  of  every  month 2            <i,v.> 

8uBp<ENA  AD  RESPONDENDUM, 

how  served 18             W> 

totie*  quotie* 14             686 

when  issued 12             »;>»> 

when  returnable 12            686 

8cBP<ENA  AD  TESTTFICANDUM, 

how  issued  and  enforced 78             708 

SUPPLEMENTAL  BILLS, 

statements  in 68             700 

when  necessary 57            700 

BUR-REJOINDER, 

form  of 670 

TESTIMONY, 

de  bene  e*te 70            706 

how  taken  in  general 67-71  708 

1   ~()(V( 

how  taken  before  masters 77,  78,  81 


TRUSTEES, 

as  parties 49  < ''-»7 

WITNESSES, 

(70S 
attendance  of,  how  compelled 67,  78  ^ 

WRITS, 

4684 
of  assistance 7,  9          <  ^^ 

.684 
of  attachment. 7,  8,  18,  64 

of  execution 8 

of  Injunction 21.  28,  66 

ofn«  «rail 21,28 

of  sequcstnition 7,  8  684. 


LAW  LIBRARY 

UNIVERSITY  OF  CALIFORNIA 
U)8  ANGELES 


R.    H.    F.    VARIE 
ATTORNEY  AT  LAW 
LM  ANtlLM.   6AC. 


